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. 1315336

 

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.

 

SUMMARY OF ISSUES:

 

• Clarification of the Identification of Goods and Services and Deletion of Parentheses
• Significance of Letters in the Mark

SEARCH RESULTS

 

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.

 

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).

 

However, in order to pursue registration, applicant must address the following:

 

Clarification of the Identification of Goods and Deletion of Parentheses

 

Some of the wording in the identification of goods is unacceptable and must be clarified because it fails to indicate specific goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   In addition, the identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application 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., “sash bands for kimono (obi).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

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).  Therefore, any modification to this wording must identify goods and/or services in the classification specified in the application for these goods and/or services.

 

The following suggested identification contains further guidance in bold and/or brackets.  Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services which is located at: http://tess2.gov.uspto.report/netahtml/tidm.html

 

Applicant should note that the braces-brackets indicate where applicant must insert specific types of goods or services.  The braces should NOT appear in the amended identification; only the specific goods or services inserted by applicant.  Applicant need not amend identifications other than where specified. 

 

Applicant may consider the following suggestions:

 

Class 009 {NOTE deletion of parentheses and unnecessary introductory clauses):

 

• Recorded content, namely, Computer software for the monitoring and control of heating, energy generating and cooling installations; information technology and audiovisual equipment, namely, Computer hardware and digital telecommunication apparatus in the nature of {SPECIFY, E.G, computer hardware, etc.} for the monitoring and control of heating, energy generating and cooling installations; measuring, detecting and monitoring instruments, indicators and controllers, namely, wireless and wired controllers for the monitoring and control of heating, energy generating and cooling installations; electric sensors; apparatus, instruments and cables for electricity as parts of home and office automation systems, NAMELY {substitute the following:  home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications}; safety, security, protection and signaling devices as parts of home and office automation systems; GPS navigation devices with tracking and mapping functions; guidance, tracking, targeting and map making devices.

 

Class 11         

 

• Burners, boilers and heaters, namely, heating boilers and water heaters embedded with electronics, software, sensors, and network connectivity; refrigerating and freezing equipment, namely, refrigerating appliances and installations embedded with electronics, software, sensors, and network connectivity; ambient heating, ventilating, and air conditioning and water purification equipment, namely, heating and air conditioning installations units embedded with electronics, software, sensors, and network connectivity;

 

Class 035

 

• Advertising, marketing and promotional services for the energy, heating and cooling industry, in particular providing consumer information via telecommunication networks for the advertising and sale of products and services provided by the energy, heating and cooling industry; business assistance, management and administrative services; business analysis, research and information services

 

Class 042

 

• IT services, namely, software development, programming and implementation; science and technology service, namely, research and development of new technology and new products in the field of home and office automation; computer hardware development; hosting services, namely, programming and hosting of websites, in particular programming and hosting of an e-commerce platform on the Internet; software as a service (SAAS), namely, featuring software {SPECIFY, E.G., FOR USE IN, monitoring and controlling heating and air conditioning installations, etc.}  in the field of home and office automation; rental of computer software; IT consultancy, advisory and information services; IT security, namely, design and development of home security systems and design and development of electronic data security systems; computer analysis and diagnostics, namely, computer system analysis and computer diagnostic services; research, development and implementation of computers and systems in the field of home and office automation; monitoring of computer systems by remote access, namely, monitoring of computer systems by remote access to ensure proper functioning, remote monitoring services of heating, ventilating and air conditioning apparatus

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Significance of Letters in the Mark

 

Applicant must specify whether the letters “WX” have any significance in the trade or industry or as applied to the goods and/or services described in the application, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

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.

 

 

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 U.S. commonwealths or U.S. territories.  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. 

 

 

 

 

/CarynGlasser/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@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.