UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

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.

 

ISSUE/MAILING DATE:

 

INTERNATIONAL REGISTRATION NO. 1105448

 

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.

 

(1)    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).

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:

 

The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served.  15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610.  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. 

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:

 

The following are the open application issues that the applicant must address in order to have a complete response to this Office action:

 

-Requirement for Submission of Statement Claiming Registration Ownership

 

-Requirement for Submission of Mark Description Statement

 

-Requirement for Clarification of Identification Language

 

________________________________________________________________________

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Search

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. In order to pursue registration, however, the applicant must respond to the following requirements.

 

 

Requirement for Statement Claiming Ownership of Prior Registrations

 

If applicant owns U.S. Registration Nos. 3226977 and 3226978, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 3226977 and 3226978.

 

 

Requirement for Submission of Mark Description Statement

 

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). 

 

Therefore, applicant must provide a description of the applied-for mark.  The following is suggested:

 

The mark consists of the wording “BOE” in stylized lettering.

 

 

Requirement for Clarification of Indefinite Identification Language

 

The following wording in the identification of goods is indefinite and must be clarified because it is indefinite as to the power source, intended use or type of goods that the applicant produces: 

 

“stage luminaires;” “lighting apparatus and installations for aircraft,” “lighting apparatus and installations,” “pocket torches, electric,” “luminous doorplates,” “torches for lighting,” “LED (light emitting diode) lighting apparatus and installations,” “OLED (light emitting diode) lighting apparatus and installations” and “illuminators.”

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

Additionally, the identification of goods contains the following language that improperly uses parentheses: “solar collectors (heating).”  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.  Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. 

 

Please note that in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c). Therefore, any modification to this wording must identify goods and/or services in International Class 011, the classification specified in the application for these goods and/or services.

 

The applicant may clarify by amending to the following, if accurate: 

 

 

Lamps; Incandescent burners; Light bulbs; Luminous tubes for lighting; Stage electric or LED luminaires; Electric discharge tubes for lighting; Lighting installations for air vehicles; Lighting apparatus namely, lighting installations for aircraft; Lighting apparatus, namely, lighting installations; Electric lamps; Daylight fluorescent lamp tubes; Electric pocket torches for lighting; Ceiling lights; Laboratory lights; Ultraviolet ray lamps, not for medical purposes; Safety lamps; Fairy lights for festive decoration; Miners' lamps; Luminous doorplate signs; Searchlights; Electric torches for lighting; Street lamps; Aquarium lights; Diving lights; Lights for vehicles; Lighting apparatus for vehicles; Solar collectors for heating; LED (light emitting diode) lamps; LED (light emitting diode) light bulbs; LED (light emitting diode) illuminating lamps; LED (light emitting diode) lighting fixtures; LED (light emitting diode) lighting apparatus, namely, lighting installations; OLED (organic light-emitting diode) lamps; OLED (organic light-emitting diode) light bulbs; OLED (organic light-emitting diode) illuminating lamps; OLED (organic light-emitting diode) lighting fixtures; OLED (organic light-emitting diode) lighting apparatus, namely, lighting installation; Illuminating lamps; Electric and LED illuminators; Planar cold cathode fluorescent lamps.

 

 

For assistance with identifying and classifying goods 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.

 

 

If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below betweent he hours of 9:00am to 5:00pm Eastern Standard Time.

 

 

/Amy C. Kean/

Trademark Attorney, Law Office 113

U.S. Patent & Trademark Office

P.O. Box 1451

Alexandria, VA 2231

Amy.Kean@USPTO.gov

Phone: 571-272-8854

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  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 application will be placed in the official application record.

 

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.