Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 12/13/2017

U.S. Registration Number  3930685

The Section 7 Amendment submitted on 10/11/2017 is not accepted for the reasons set forth below.

THE AMENDED GOODS BROADEN THE SCOPE. 

The proposed amendment to the identification of goods and/or services cannot be accepted because it broadens the scope of the goods and/or services in the registration.  Such an amendment would require republication of the mark with the amended goods and/or services to ensure proper public notice as to the extent of the owner’s trademark rights.  The identification of goods and/or services in a registration can only be restricted or otherwise changed in ways that would not require republication of the mark.  37 C.F.R. §2.173(e); TMEP §1609.03.

The owner seeks to change the goods and/or services from “Light emitting diodes for the purpose of lighting for illuminating signage and advertisements, for illuminating rooms, buildings and streets; electric lamps; lights for chillers in the food industry; lights for canopy engine for multideck cabinets; lights for refrigerated multideck cabinets with doors in the food industry; light modules and lights with light emitting diodes as the means of lighting, namely, LED module chain for highlighting lines and edges and for backlighting complex contours, letters, symbols and surfaces in signage applications and in illuminated advertising applications for use as light fixtures, general lighting fixtures, effect and design lighting fixtures, emergency lighting fixtures, spot-lights, ceiling recessed light modules, floodlight modules, trunking light modules, floor recessed light modules, free standing light modules, surface mounted and recessed light modules, surface mounted and suspended light modules, suspended light modules, top-mounted light modules, wall mounted light modules, wall recessed light modules; sources of light including light emitting diodes, namely, light emitting diodes light fixtures” to “Light emitting diodes for the purpose of lighting for illuminating signage and advertisements; electric lamps; light modules and lights with light emitting diodes as the means of lighting, namely, LED module chain for highlighting lines and edges and for backlighting in signage applications and in illuminated advertising applications for use as light fixtures; sources of light including light emitting diodes, namely, light emitting diodes light fixtures.”  Such an amendment would serve to broaden the scope to include goods and/or services not originally covered by the goods and/or services in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993).  Accordingly, the Section 7 Amendment is not accepted.

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

/Joyce Conley/ 

Joyce Conley

Trademark Specialist

Post Registration

571-272-9520

571-273-9520 Fax

Joyce.conley@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  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/trademarks/teas/correspondence.jsp.