Offc Action Outgoing

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.

SUMMARY OF ISSUES:

IDENTIFICATION OF GOODS AND SERVICES
MARK DESCRIPTION REQUIRED

Search Results

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).

IDENTIFICATION OF GOODS AND SERVICES

Class 9

The identification for “software for hearing instruments” in International Class 9 is indefinite; applicant must specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9 (i.e., International Classes 41 and 42), any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).

The following are examples of acceptable identifications for software in International Class 9: “software for hearing instruments, namely, software for transmitting and processing sound,” “software for hearing instruments, namely, software for data processing,” “software for hearing instruments, namely, software for amplifying sound.”

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).

The wording “magnetic data carriers” in the identification of goods is indefinite and must be clarified to indicate whether the magnetic data carriers are blank or prerecorded. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. If prerecorded, applicant must also indicate the subject matter featured on the magnetic data carriers.

The wording “data processing programs” in the identification of goods is indefinite and must be clarified because, as written, it is unclear whether this wording identifies downloadable software for data processing in Class 9 and/or data processing programs in printed form in Class 16. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The wording “electronic publications downloadable” in the identification of goods is indefinite and must be clarified to indicate the specific nature of the publication, e.g. magazine, book, etc., and the subject matter of the publication. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The wording “data carriers” in the identification of goods is indefinite and must be clarified to indicate whether the data carriers are blank or prerecorded. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. If prerecorded, applicant must also indicate the subject matter featured on the carriers.

Class 10

The wording “devices for hearing-impaired persons (hearing instruments)” in the identification of goods is indefinite and must be clarified because, as written, it is unclear whether this wording identifies devices in the nature of stetoclip hearing aid listeners in Class 9 and/or devices in the nature of hearing aids in Class 10. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

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.

Class 35

The identification for “retail services” in International Class 35 is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. Retail services could include a wide array of retail support services – from accounting to advertising and marketing services. If applicant’s retail services involve retail sales, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail store services featuring…” See TMEP §§1301.01(a)(ii), 1402.11.

Class 37

The wording “repair of hearing instruments, hearing aids, prosthetic hearing devices, audiometers as well as components and parts of and accessories for the above-mentioned goods” in the identification of services is indefinite and must be clarified because, as written, it is unclear whether this wording identifies repair of hard goods in Class 37 and/or maintenance of components, parts and/or accessories in the nature of software in Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Class 42

The wording “scientific and technological services and research and design relating thereto” in the identification of services is indefinite and must be clarified to indicate that the research and design services are in the nature of scientific and technological services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The wording “industrial analysis and research services” in the identification of services is indefinite and must be clarified because, as written, it is unclear whether this wording identifies business analysis and research in Class 35 and/or analysis and research services to assure compliance with industry standards in Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Class 44

The wording “medical services in audiological diagnosis” in the identification of services is indefinite and must be clarified because, as written, it is unclear whether this wording identifies services in the nature of medical and scientific research in the field of diagnosis in Class 42 and/or medical diagnosis of audiological conditions in Class 44. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Applicant may adopt the following identification, if accurate:

CLASS 5: pharmaceutical preparations for treating ear-related diseases; sanitary preparations for medical purposes; ear drops

CLASS 9: software for hearing instruments, namely, software for transmitting and processing sound, software for data processing and software for amplifying sound; wireless transmission and receiving devices, namely, transmitters of electronic signals and audiovisual receivers particularly for hearing instruments; batteries; apparatus for recording, transmission and reproduction of sound, images and/or data; blank magnetic data carriers; data processing apparatus; computers; data processing programs in the nature of software for data processing; electronic publications downloadable in the nature of {indicate specific nature of publication, e.g. magazines, books, etc.} in the field of {indicate subject matter of publication, e.g. audiology}; pre-recorded data carriers featuring {indicate subject matter, e.g., audiology}

CLASS 10: devices for hearing-impaired persons in the nature of hearing aids; hearing aids; medical hearing instruments for use as hearing aids; prosthetic hearing devices; audiometers; components and parts of the above-mentioned goods as well as accessories for the above-mentioned goods, namely, {indicate specific components, parts and accessories}

CLASS 35: retail, wholesale, online and mail order retail store services for pharmaceutical preparations for treating ear-related diseases, sanitary preparations for medical purposes, ear drops, software for hearing instruments, wireless transmission and receiving devices, particularly for hearing instruments, batteries, apparatus for recording, transmission and reproduction of sound, images and/or data, particularly for hearing instruments, magnetic data carriers, particularly for hearing instruments, data processing equipment and computers, particularly for hearing instruments, data processing programs, particularly for hearing instruments, electronic publications downloadable, data carriers, devices for hearing-impaired persons, hearing instruments, hearing aids, prosthetic hearing devices, audiometers, components and parts of the above-mentioned goods as well as accessories for the above-mentioned goods

CLASS 37: repair of hearing instruments, namely, hearing aids, prosthetic hearing devices, audiometers as well as components and parts of and accessories for the above-mentioned goods, namely, {indicate specific components, parts and accessories repaired}

CLASS 42: scientific and technological services, namely, research and design relating thereto; industrial analysis and research services to assure compliance with industry standards; design and development of computer hardware and software; development of hearing instruments, devices for hearing-impaired persons and hearing aids; all above-mentioned services in relation to hearing aids

CLASS 44: audiology services; medical advisory services for persons with restricted hearing capacity; medical services in audiological diagnosis, namely, medical diagnosis of audiological disorders; installation of hearing instruments, hearing aids, prosthetic hearing devices, namely, hearing aid fitting and testing services

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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.

MARK DESCRIPTION REQUIRED

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 “SIGNIA” wherein the wording “SI” is in red and the wording “GNIA” is in grey.

RESPONSE GUIDELINES

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

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.

/Evin L. Kozak/

Trademark Examining Attorney

Law Office 116

571-272-9237

evin.kozak@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.