UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79086518
MARK: CRYSTAL WHITE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: TridonicAtco GmbH & Co. KG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
INTERNATIONAL REGISTRATION NO. 1048856
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
A. No Conflicting Marks Found
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
B. Identification of Goods/Services
Part of the identifications of goods is indefinite or vague and requires clarification. Specific issues will be addressed within each class below. As to each of the identifications of goods and recitations of services, applicant must use the common commercial or generic names for the goods and services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §§1402.01 and 1402.03(a).
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitation of services was indefinite. Applicant is not required to accept these proposals but any further changes must be within the scope of the identifications and recitations set out in the application. Please see below for a more thorough discussion.
· International Class 011: Light emitting diodes for the purpose of lighting, for example for the illumination in refrigerating apparatus, refrigerating chambers, refrigerators and/or refrigerating display cabinets (display cases), for illuminating signage and advertisements, for illuminating rooms, buildings, streets; electric lamps; lights; light modules and lights with light emitting diodes as the means of lighting; sources of light including light emitting diodes
The wording in the identification of goods/services must be clarified because it is too broad and could include goods/services in other international classes. Some lights are not listed in class 011 and the applicant cannot add or change classes in a 66 application. See TMEP §§1402.01, 1402.03.
For example, “modems and/or monitors” could be read to mean “modems or monitors” and thus it is unclear which goods applicant intends to identify. Applicant could amend the identification to “modems” alone, or “monitors” alone, or “modems and monitors” if applicable. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may adopt the following identification of goods/services, if accurate: See TMEP §1402.01.
International Class 011: Light emitting diodes for the purpose of lighting, for {use in} the illumination in refrigerating apparatus, refrigerating chambers, refrigerators and refrigerating display cabinets {as} display cases, for illuminating signage and advertisements, for illuminating rooms, buildings {and} streets; electric lamps; light {diffusers}; light modules and lights with light emitting diodes as the means of lighting {please define these goods with common commercial name}; sources of light including light emitting diodes {please define the specific sources in this class}
Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
C. Disclaimer Required
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10
Applicant must disclaim the descriptive wording “WHITE” apart from the mark as shown because it merely describes a type of light emitted for the LED’s as listed in the applicant’s ideification and has little if any trademark significance. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
1. WHITE LIGHT: White light can be generated in many ways. The sun is such a source, electric incandescence is another. Modern light sources are fluorescent lamps and light-emitting diodes. An object that does not alter the color of light reflected from its surface will appear white, compared to the surroundings, unless it has very high specular reflection.
No claim is made to the exclusive right to use “WHITE” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
D. Response Guidelines
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712. The signer must personally sign and date the response or manually enter their electronic signature in the signature block. TMEP §605.02.
/wrossman/
William M. Rossman
Trademark Examining Attorney
Law Office 109
William.Rossman@USPTO.GOV
571-272-9029
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.