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

 

INTERNATIONAL REGISTRATION NO. 1150605

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4173384 and 1103356.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

COMPARISON OF THE MARKS

 

 

In the present case, applicant’s mark is GRUNDIG and registrant’s marks are GRUNDIG.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.

 

It is not significant that Reg. No. 1103356 appears in stylized form because a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

 

Therefore, the marks are confusingly similar. 

 

 

 

COMPARISON OF THE GOODS

 

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be related in some manner or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the goods and/or services originate from the same source.  Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597 (TTAB 2012); TMEP §1207.01(a)(i); see On-line Careline Inc. v. Am. Online Inc., 229 F.3d at 1086, 56 USPQ2d at 1475; In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Applicant’s goods of “Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments and systems for receiving, recording, transmission, processing and/or reproduction of analog and/or digital video signals and/or analog and/or digital audio signals and/or data, including apparatus and instruments for connection to/with the Internet, in particular consumer electronic apparatus, including aerials, car radios, A V -receivers, image generation and/or representation units for representation and/or visualization of moving pictures, still pictures, animations and/or multimedia data, apparatus with picture tubes, LCD, plasma or TFT technology, screens or picture tubes, camera recorders, CD-players and CD recorders, MP3 players and MP3 recorders, digital cameras, displays, DVD-players or DVD-drives and recorders, cleaning apparatus for DVD and CD players, drives and recorders, CD-ROM disc drives, optical disc drives, TV sets with picture tubes or plasma screens or LCD screens, TV-games apparatus, CCTV (closed circuit television) systems, hard disk recorders, HiFi sets, mobile telephones and wired telephones, monitors, projectors, radio apparatus with or without cassette players or CD-players, set-top boxes, clock radios, videorecorders; apparatus for recording, transmission and reproduction of radio signals and data signals; apparatus and systems for satellite receiving, including aerials, receivers, set-top boxes and accessories therefor; telematic apparatus and instruments and systems (included in this class); navigation apparatus and instruments and systems arranged therefrom (included in this class), in particular satellite supported navigation systems and such systems also for vehicles; junction units; adapters; plugs; descramblers; filters; mounting supports; cables; converters; modems; modules; switches; transformers; distributors; multi-media devices and apparatus, including modems and interactive apparatus; magnetic, electronic (in particular semiconductor memories), digital and/or optical recording carriers or storage media; apparatus and instruments relating to the field of communication technology; backup warning systems; head up displays; electronic transmitter and receiver system comprised of telecommunications transmitters and receivers and operating software, for determining and tracking the geographic location of persons, animals, personal property and vehicles; containers for goods and devices of the entertainment electronics; electrotechnical and electronic apparatus (included in this class); computers and software; computer games; tape players and tape recorders; data banks, data storage and processing apparatus, data indicators; television cameras, magnetic cassettes and tapes for recording sounds and images; microphones and microphone mixers; headphones; earphones; loudspeakers; loudspeaker cabinets; speaker systems; wireless apparatus; namely television sets and radio receivers; record players; tuners; amplifiers; equalizers; wireless transmitters and receivers, particularly wireless remote controls; radiotelephone apparatus; dictating machines; telephone answering apparatus and telephone call recorders; automatic telephone selectors; apparatus used for acoustic amplification of telephone conversations; traffic pilots for wireless apparatus for automobiles; electric and electronic measuring, controlling, regulating, testing, switching and monitoring apparatus; electric batteries and accumulators; chargers for batteries and accumulators; remote controllers for the aforesaid apparatus; remote-controlled door openers; devices for remote control of machine tools; diagnostic apparatus for automobiles; combinations of the aforesaid articles; parts of all aforesaid articles, all the goods namely used in motor vehicles by their very nature for use in the areas of entertainment, information, communication, navigation, telematics, security and safety electronics” are related to registrant’s goods of:

 

Reg. No. 1103356: Radio receivers, car radios, dictating machines, television sets, earphones, loudspeakers, and parts of all the aforesaid goods

 

Reg. No. 4173384: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, namely, Scales; and instruments and systems arranged therefrom for receiving, recording, transmission, processing, reproduction of analog and digital video, analog and digital sound and data, namely, DVD machines, apparatus and instruments for connection to the Internet, namely, External modems; apparatus for transmission of communication, namely, aerials, car radios, AV-receivers; image generation and representation devices, namely, Cameras for representation and/or visualization of moving pictures, still pictures, animations, and/or multimedia data; telecommunication apparatus, namely, telecommunications towers that utilize cathode ray tubes, LCD, plasma or TFT technology, screens or picture tubes; event recorders; CD-players; digital cameras; Flat panel display screens; DVD players; DVD drives; TV sets with picture tubes, plasma screens, and LCD screens, digital video recorders, HiFi stereo sets comprised primarily of stereo amplifiers, stereo receivers, stereo tuners; mobile telephones; wired telephones; monitors, namely, LCD monitors; projectors; radio apparatus with or without cassette players or CD-players; set-top boxes; Radios incorporating clocks; video tape recorders; apparatus for recording, transmission and reproduction of electronic or digital music, namely, MP3 players; apparatus for recording, transmission and reproduction of radio signals and data signals, namely, dispatch radios; apparatus and systems for satellite receiving, namely, aerials, mobile data receivers, set-top boxes and accessories for set-top boxes, adapters, antenna plugs, descramblers, filtering apparatus, namely, antenna filter; mounting devices for monitors, electrical cables, converters, low noise converters, modems, integrated circuit modules, electric circuit multi-switches, transformers, amplifiers, distribution transformers. computer software and interfaces for computers for use in searching, navigating, storing, arranging, reproducing and browsing data and data files and for database management; navigation systems for vehicles comprised primarily of GPS; multi-media devices and apparatus, namely, modems; blank magnetic data carriers in tape or disc form; blank electronic, digital and optical recording carriers in tape or disc form, namely, CD ROM disc, DVD and magneto-optical discs; communication technology apparatus and instruments, namely, Aeronautical radio communication machines and apparatus; general in-house communication, namely, telephone, walkie talkie, wireless cellular phone headsets; office technology apparatus, namely, photocopiers; answering machines; dictating machines; headphones; earphones for dictating machines; scanners; telecopiers and structural parts therefor; computer hardware and software modules for the Internet, for recording, checking, distributing, analyzing and reporting medical images and information; software for use in viewing images scanned by medical diagnostic imaging equipment irrespective of modality or anatomy for use in medical diagnostics and treatment; software for use in managing images and information in the field of Picture Archiving and Communication System; computer software programs for use in database management of medical records, Software for use in image guided and cardiac surgery; Software used for integrated viewing and processing images and patient related data at any work spot, and for workflow enhancing in the fields of radiography and radiology; software to permit a user to retrieve, display, and browse medical images and medical information. computer software, embedded computer software, and computer chips, all for use for encoding and decoding of data or information and for copy protection or for embedding, verifying and detecting watermarks in audio, video and data files; terminal apparatus for Internet for use in modems; apparatus for information processing, namely, computer; telecommunication wired and wireless subscriber apparatus and instruments, namely, digital subscriber line modems and transceivers; interactive video game programs adapted for use with television sets; video game software; accessories for all the aforesaid goods, namely, junction boxes; ethernet adapters, voltage transformer adapters, serial port adapters, power plug adapters, electric accumulators, acoustic couplers, batteries, card stations in the nature of magnetic coded card readers, data transfer units for transferring data from one device to another, optical filters, mounts in the nature of mounting racks for computer hardware, for telecommunications hardware, coaxial, computer, electrical, ethernet cables, headphones, battery chargers, magnets for erasing recorded signals from a media remnants, blank magnetic computer tape cassettes, magnetically encoded debit cards, magnetically encoded credit cards, microphones, audio mixers, external modems, internal modems, cable modems, internal and external power supplies, hand-operated and foot-operated electric switches, computer chips, semiconductor chips for storing circuit data, storage cards in the nature of blank smart cards, electric plugs, electric plug cards for electrically locked doors; converters, amplifiers, electrical distributors; remote controls, namely, remote control receivers and remote control transmitters, for, television sets, lighting systems, stereos, DVD players, computers, computer game machines, sound recording apparatus, video disc players, loudspeakers, loudspeaker horns. containers for entertainment electronic goods and devices, namely, cases for mobile phones, notebooks, aforesaid remote controls, DVD players

 

Applicant goods include the identical goods of Reg. No. 1103356.  Applicant’s goods and the goods of Reg. No. 4173384 are virtually identical, containing the same types of electronic devices and systems (however, worded slightly differently).  Additionally, applicant’s goods contain broad language that can encompass registrant’s more narrow goods.  When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005.  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application uses broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification.

 

Since the marks are identical and the goods are highly related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Additionally, applicant must respond to the following requirements. 

 

ENTITY AND CITIZENSHIP/COUNTRY OF ORGANIZATION OMITTED

 

Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation.  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).  This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of an international registration to the U.S.”).  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). 

 

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent thereof.  See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04.  For an association, applicant must also specify whether the association is incorporated or unincorporated.  TMEP §803.03(c).

 

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04.  To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.  See id.

 

SIGNIFICANCE OF THE MARK

 

Applicant must explain whether “GRUNDIG” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Further, applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, applicant must respond to the following questions:

 

Applicant must specify whether “GRUNDIG” in the mark has any meaning in a foreign language.  See 37 C.F.R. §2.32(a)(9); TMEP §§809, 814.  An applicant must submit an English translation of all foreign wording in a mark.  37 C.F.R. §2.32(a)(9); TMEP §809. 

 

Accordingly, if the wording has meaning in a foreign language, applicant should provide the following translation statement:

 

The English translation of “GRUNDIG” in the mark is “________”. 

 

TMEP §809.03.

 

Alternatively, if the wording does not have meaning in a foreign language, applicant should provide the following statement: 

 

The wording “GRUNDIG” has no meaning in a foreign language. 

 

Id.

 

 

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

 

IDENTIFICATION OF GOODS

 

ADVISORY: In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services 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). 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

The identification of goods and/or services contains parentheses.  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/or services and incorporate the parenthetical information into the description. 

 

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Please see suggested language below.

 

Applicant may adopt the following identification, if accurate: 

 

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, namely, _____{indicate specific goods, e.g. weighing scales, graduated rulers, life jackets}; apparatus and instruments and systems for receiving, recording, transmission, processing and/or reproduction of analog and/or digital video signals and/or analog and/or digital audio signals and/or data, namely, apparatus and instruments for connection to/with the Internet, namely, consumer electronic apparatus in the nature of aerials, car radios, A V -receivers, image generation and/or representation units in the nature of televisions for representation and/or visualization of moving pictures, still pictures, animations and/or multimedia data, apparatus with picture tubes, LCD, plasma or TFT technology, _______{indicate type, e.g. touch, video, projection} screens or picture tubes, camera video recorders, CD-players and CD audio recorders, MP3 players and MP3 audio recorders, digital cameras, liquid crystal displays, DVD-players or DVD-drives and recorders, cleaning apparatus in the nature of magnetic head cleaners for DVD and CD players, disk drives and _____{indicate type, e.g. DVD, digital video} recorders, CD-ROM disc drives, optical disc drives, TV sets with picture tubes or plasma screens or LCD screens, TV-games apparatus in the nature of _____{indicate common commercial name, e.g. video game cartridges}, CCTV (closed circuit television) systems for security and surveillance comprised of _____{indicate goods, e.g. cameras, switchers, monitors, mircophones, and recorders}, hard disk recorders, HiFi phonograph record player sets, mobile telephones and wired telephones, video monitors, _____ {indicate type, e.g. movie, multimedia} projectors, radio apparatus with or without cassette players or CD-players, set-top boxes, radios incorporating clocks, videorecorders; apparatus for recording, transmission and reproduction of radio signals and data signals, namely, _____{indicate specific goods, e.g. radio receivers and radio signal turners; apparatus and systems for satellite receiving, namely, aerials, audio-video receivers, set-top boxes and accessories therefor, namely, _____{electric cables, power adapters}; telematic apparatus and instruments and systems, namely, ______{indicate specific goods, e.g. wireless Internet devices which provide telematic services and have a cellular phone function}; navigation apparatus and instruments and systems arranged therefrom, namely, satellite supported navigation systems and such systems also for vehicles; junction units in the nature of boxes; power adapters; _____ {indicate type, electrical, adapter} plugs; descramblers; ____ {indicate type, e.g. antenna, camera, optical} filters; mounting supports for _____{indicate purpose, e.g. monitors, computer hardware}; electric cables; converters; modems; ______{indicate type, e.g. microphone, rectifier} modules; electrical switches; transformers; distribution transformers; multi-media devices and apparatus, namely, modems and interactive apparatus in the nature of _______{indicate goods, e.g. computers, televisions}; magnetic, electronic, namely, semiconductor memories, digital and/or optical blank recording data carriers or blank electronic storage media; apparatus and instruments relating to the field of communication technology, namely, _____{indicate common commercial name of goods, e.g. cell phones, computers}; backup electric warning light systems; head up displays for use in military and commercial aircraft, namely, fixed and helmet mounted transparent electronic displays for providing aircraft crew members with navigational and operational information; electronic transmitter and receiver system comprised of telecommunications transmitters and receivers and operating software, for determining and tracking the geographic location of persons, animals, personal property and vehicles; containers for goods and devices of the entertainment electronics, namely, _____{indicate specific goods, e.g. camera cases, carrying cases for cell phones}; electrotechnical and electronic apparatus, namely, _____{indicate specific goods, e.g. electrotechnical vibration meters, DVD players, CD players}; computers and ______ {indicate function of software, e.g. computer game software, anti-spyware}; computer game _____{indicate media, e.g. cartridges, discs, software}; tape players and tape recorders; data banks in the nature of blank {magnetic, optical} data carriers, data storage in the nature of blank {magnetic, optical} data carriers and data processing apparatus, data indicators in the nature of _____ {indicate specific goods, e.g. in the nature of blank {magnetic, optical} data carriers}; television cameras, blank magnetic cassettes and tapes for recording sounds and images; microphones and microphone audio mixers; headphones; earphones; loudspeakers; loudspeaker cabinets; loud speaker systems; wireless apparatus, namely, television sets and radio receivers; record players; stereo tuners; amplifiers; graphic equalizers; wireless transmitters and receivers, particularly wireless remote controls for ____{indicate specific devices, e.g. radios, televisions}; radiotelephone apparatus, namely, ____{terminals}; dictating machines; telephone answering apparatus and telephone call audio recorders; automatic telephone selectors, namely, exchangers; apparatus used for acoustic amplification of telephone conversations, namely, amplifiers; traffic pilots, namely, palm pilots for wireless apparatus for automobiles; electric and electronic measuring, controlling, regulating, testing, switching and monitoring apparatus, namely, ______{indicate specific goods, e.g. distance measuring apparatus, gasometers, coordinate measuring machines}; electric batteries and accumulators; chargers for batteries and accumulators; remote controllers for the aforesaid apparatus, namely, _____{indicate specific goods, e.g. accumulators}; remote-controls for door openers; remote controls for machine tools; diagnostic apparatus for automobiles, namely, for identifying refrigerant type and purity in automobile air conditioning systems; combinations of the aforesaid articles, namely, _____{must specify the combinations, e.g.  television set and DVD player combinations}; structural parts of all aforesaid articles, all the goods namely used in motor vehicles by their very nature for use in the areas of entertainment, information, communication, navigation, telematics, security and safety electronics

 

Class 12: Automobiles, motorcycles and parts therefor, namely, _________{indicate specific goods, e.g. antitheft alarms, holders for MP3 players that are affixed or specially adapted to the automobile} used in motor vehicles by their very nature for use in the areas of entertainment, information, communication, navigation, telematics, security and safety electronics

 

 

Please note, the wording in bold above shows the changes being proposed for the identifications.  When making its amendments, applicant should enter them in standard font, not bold.  

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

 

RESPONSE GUIDELINES

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those 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.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

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

 

 

 

 

/Courtney McCormick Alvarez/

Trademark Examining Attorney

Law Office 108

phone: (571) 272-2907

courtney.alvarez@uspto.gov

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.