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.

SEARCH OF OFFICE’S DATABASE OF MARKS

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).

SUMMARY OF ISSUES:

Amend identification of services
Description of mark required

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because applicant must more specifically identify the nature and types of services to maintain classification and avoid use of parentheses in the identification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate: Advertising services, public relations and marketing services, namely, promoting and marketing the goods and services of others through all public communication means; the organization of exhibitions and fairs for business and advertising purposes; providing office functions; business administration, management and consultancy services, namely, accounting services; import-export agency services, namely, services of an expert for trade and industrial products; arranging and conducting of public auctions; the bringing together, for the benefit of others, of a variety of goods, for the purpose of providing retail, wholesale and online store services and catalogue ordering services all featuring fire extinguishing substances, adhesives not for household and stationary purposes, paints, varnishes, lacquers, anti-rust, preservatives against deterioration of wood, binding substances and thinners for paints, paint pigments, preservatives for metal, shoe paints, print paints and inks, toners, substances for coloring foodstuffs, pharmaceutical products and beverages, metal foils and metals in powder form for painters, decorators, printers and artists, preparations use for bleaching and cleaning purpose, perfumery, cosmetic products, deodorants use for personal purpose including deodorants for human and animals, soaps, teeth care products, abrasive products, including emery cloth, emery paper, emery powders and pastes, pumice stones, pastes, polishes and care products use for leather, vinyl, metal and wood, liquid and gas fuel and their additives, candles, wicks, semi-manufactured waxes, waxes, paraffin for illuminating purposes, medication for human and animal health, chemical products for medical purposes, dietetic substances for medical purposes, diet foods, baby foods, medical herbs and herbal drinks for medical purposes, dietetic supplements for human and animals, hygienic products, including pads, tampons, diapers, blisters, plasters, bandages, bandaging materials for medical purposes, substances for destroying weeds, vermin and fungus, odor repellents for rooms, vehicles and other places, excluding for personal use, disinfectants, antiseptics as bacteria killers, detergents for medical purposes, metal materials use for sheltering, saving, protecting, covering, wrapping, surrounding, storing and establishing purpose, including metal ladders, metal materials use for sitting, filtering and similar purposes, metal doors and windows, shutters, venetian blinds and cases and handles thereof excluding locks, metal cables and wires not for electrical purposes, ironmongery, namely, hardware articles, airing canals, holes, hole covers, pipes, chimney heads for ventilating, heating and air conditioning installations, metal materials for sign, direction, indication and advertisement purposes, including signboards, boards, registration plates, metal pipes for liquid and gas transfer and connecting parts thereof, including drilling pipes, metal money safes, metal crown posts and floats, metal pontoons, anchors for sea vehicles, works of art made of common metals and of their alloys, metal covers, bottle taps, metal poles, machines and industrial robots used for shaping, processing of wood, metal, glass and plastics, machine tools, machine tools and industrial robots used for the same purpose, including galvanize coated and electrolysis, namely, galvanoplasty machines, working machines and robotic mechanisms having same functions, lifting, carrying and transferring machines, robotic mechanisms having same functions, including elevators, moving stairs, winches, machines and robotic mechanisms use for agricultural and stockbreeding purpose and processing of cereals, fruits, vegetables and foods, motors and machines other than those for land vehicles, electrical motors and parts and apparatus including electronic door opening-closing units, bearings, ball and roller bearings, wheel removing and mounting machines, alternators, generators, electricity generators, generators driven by solar energy, painting machines, automatic paint injection guns, electric staple machines and guns, electric adhesive guns, pressured air or liquid atomizer guns for machines, manual electric drillers, manual motor saws, decoupage machines, spiral machines, pressured air producers, compressors, vehicle washing machines and robotic mechanisms having same functions, welding machines, electric arc welding equipment, electrical soldering devices, electrical arc cutting equipment, electrical welding machine electrodes and robotic mechanisms having same functions, printing machines, packaging machines, filling-plugging and closing machines, labeling machines, classification machines and robots and robotic mechanisms having same functions, including electrical plastic closing/sealing, packaging equipment, textile machines, sewing machines and industrial robots having same functions, pumps other than machine or motor parts, including fuel filling and dispensing pumps and their guns, electrical apparatus used in the kitchen for chopping, grinding, crushing, mixing and crumbling, washing machines, including laundry and dish washing machines, clothes driers including the ones which do not operate with heating, electrical machines used for cleaning floor, carpets and floor coverings, vacuum cleaners and their parts, automatic vending machines, goods such as forks, spoons, knives, including those made of precious metals, non-electrical kitchen apparatus used for cutting, chopping and peeling purposes, cutting and provoking weapons, shaving, depilation, manicure, pedicure and beauty care apparatus and instruments for personal use, including electrical hair straighteners and curlers and scissors, repairing machines, instruments and vehicles, hand operated tools being non-motorized related to construction, agriculture, horticulture and forestry, electrical and steam irons, apparatus and instruments used for measurement and estimation and their indicators including the ones used for scientific purposes and used in laboratories, apparatus for recording, transmission or reproduction of sound and images, including apparatus used for the purpose of data processing, communication and replication and computer hardware, magnetic and optical data carriers, computer programs and software which are recorded in these magnetic and optical carriers, electronic publishing which can be downloaded through computer networks and also can be recorded in magnetic and optical mediums, cards with magnetic/optical reader, antennas, satellite antennas, amplifiers and parts thereof, ticket automates, cash machines, electronic elements used in machines and apparatus, counters for measuring the consumption of the unit of time and timers, protective clothing, lifesaving and protecting equipment, including ear plugs for divers, glasses, sun glasses, lenses and their boxes, cases, parts and accessories, apparatus for transmission, transduction, storage and control of electric energy, including cables and power supplies used in electric and electronic, batteries, accumulators, anodes, cathodes, apparatus for warning and alarm except vehicle alarms, electrical bells, signaling apparatus, indicators used for traffic purposes, fire-extinguishing apparatus and devices including fire extinguishing vehicles, including fire hoses and fire extinguishing valves, radars, submarine radars being sonars, night vision providing and increasing devices and apparatus, magnets, decorative magnets, surgical, medical, dental and veterinary apparatus, devices and furniture, artificial limbs and organs including ear plugs for protection, medical orthopedic materials, clothing for surgery rooms and sterile covers, apparatus and materials for sexual purposes, birth control instruments, namely, condoms, feeding bottles, feeding bottle nipples, pacifiers, tooth scratching loops for babies, lightening apparatus being lightening armatures for vehicles, for indoors and outdoors, apparatus for heating and steam producing installations, including solid, liquid and gas fuel and electric stoves, cook stoves, cooling apparatus and freezers, electric and gas apparatus, machines and devices used for cooking, drying and boiling, including tumble dryers, hair dryers and hand drying apparatus for washrooms which operate with electrical and heating methods, sanitary installation and vitrified, water softening apparatus, water purifying apparatus, water purifying installations, sewage purifying installations, electrical coverlets and electrical quilts, healing pillows, electrical or non-electrical foot heaters and hot water bags being thermophore not for medical purposes, filters and filter-motor combinations for aquariums, industrial type cooking, drying and cooling installations, pasteurizing and sterilizing machines, motorized land vehicles and motors for land vehicles, parts, including motorcycles, mopeds, bicycles and bodies thereof, handle bars, bumpers, vehicle seats, head supports for seats, safe child seats, seat coverings, car covers with designs, sun visors, signals and lamps for directional signals, windshield wipers, arms for windshield wipers, tire tubes and tire covers, tubeless tires for vehicles, tire repair sets, vehicle tire patches, weld patches, valves for vehicle tires, glasses for vehicles, safe vehicle glasses, rear view mirrors and side-mirrors for vehicles, chains for anti-skidding, skids, luggage earners for vehicles, bicycle and ski carriers, saddles, lire inflating pumps, burglar alarms and horns for vehicles, safety belts and airbags for passengers, baby carriages, wheel chairs, strollers, hand carts, shopping carts, one or multiple-wheeled hand carts, market cars, wheeled carriers for household goods, side arms, air guns, spring guns and their cases and slings thereof, fireworks, protective gases for personal use, jewelry goods, including their imitation, gold, jewels, precious stones, jewelry, cufflinks, tiepins, monuments and trinkets thereof, watches and time measuring devices, including chronometers, metronomes and their parts, watch cordons, musical instruments and music boxes, paper, cardboard and products made of them, except use for stationery purposes, packaging and wrapping materials made of plastic materials, printed documents, printed publications, calendars, posters, pictures, notices, charts, stickers, stamps, stationery, office, educational and teaching materials, except furniture and apparatus, office machines, brushes and rolls for paints, rubber, gutta-percha, rubber, asbestos, mica or semi processes synthetic materials made of these goods in the form of powder, sheet, stick and folio, isolation, packing and blocking materials, including joint filling, gaskets and O-rings, flexible pipes, hoses made of gum, plastic or rubber, including the ones used for vehicles, hoses whose pipe, cover and sleeves are made of textile, nonmetal pipe covers and sleeves, hose sleeves, radiator hoses for vehicles, excluding fire hoses, processed or unprocessed leather and hides, artificial leather, cowhide, lining leather, articles made of leather, imitation leather and other materials used for carrying purpose and other goods not included in other classes, including bags, leather and stout leather boxes and trunks and key holders, umbrellas, parasols, sun visors, walking sticks, whips, harness, saddler, stirrups and saddle belts, construction, road construction and repair materials made of sand, stone chips, asphalt, tar, cement, gypsum, concrete, materials used for the purpose of building/construction/road construction and similar purposes which are made of and shaped with concrete, gypsum, earth, clay, natural stone, artificial stone, wood, plastic or synthetic, building parts, buildings, poles, barriers, including doors and windows made of wood and synthetic, metal, mechanic and non-luminous traffic signs for roads, monuments, statues made of concrete, stone and marble, natural or synthetic surface coverings in the form of layers or bands, synthetic coatings made adhered through heat, pitchy cardboard for roofs, pitchy coverings, glass products for constructions, non-metal prefabricated swimming pools, aquarium sands, furniture made of any kinds of substances and materials including clothes hangers legged or fixed, bed mattresses, pillow, non-medical air beds and pillows, sleeping bags for campers, sea bed, mirrors, beehives, artificial honeycombs and wax bars, baby carriages, play pen for indoors, cradles, baby walkers, wood or synthetic panels, pictures, frames for paintings, identity discs, ID cards, name tags, label, wooden or synthetic package, barrels, casks, tanks, boxes, package sheets, containers for transportation and storage purposes, trunks, carrying palettes and caps used with these goods, hardware goods made of wood or synthetic materials, furniture joints, opening-closing installations, baskets, fisherman baskets, pet houses, nests and beds, transportable ladders made of wood and plastic, moving staircases, bamboo curtains, window shade curtains, band curtains, bead curtains for decorative purposes, curtain clasps, curtain rings, curtain hangers, curtain hooks, curtain sticks, cleaning necessities being non-electric, brushes except for painting brushes, brushes for cleaning purposes, materials used for brush making, steel chips, sponges, steel wool, cleaning wool, cleaning and wiping clothes made of textile, dish-washing gloves, non-electric polishing machines, carpet beaters and fullers, carpet brooms, mops, toothbrushes, electrical toothbrushes, dental floss, shaving brushes, hair brushes, combs, non-electrical household and kitchen articles, ironing boards, ironing board covers, laundry-drying mechanisms, cloth hangers, cages and materials for pets, plant and animal raising areas used in the household, decorative articles made of glass, porcelain, ceramic, clay, mousetraps, insect traps, fly catchers, fly rackets, covers for toilet holes, perfume burners being burners giving off scents when lit, perfuming pans, perfume sprays and vaporizers being atomizers, non-electric devices for removing makeup, powder puffs, boxes for toilet articles, spraying hose heads, heads for water sprinklers, watering sprinklers, garden watering sprinklers, tips connected to faucets, wrought glass, partially wrought glass, glass mosaics and glass powder for decorative purposes except for building, glass wool not for insulation and textile purposes, cups given during sports competitions, ropes, cords, rope ladders, hammocks, fish nets, tents, awnings, tarpaulins, sail canvas, automobile covers, sacks, packaging bags made of textile, padding materials including wool and cotton, not of rubber or synthetic, synthetic fibers, twisted raw fibers and fiberglass threads for textile purposes, twisted yam for textile purposes, sewing, embroidery and knitting threads, cotton threads, flexible threads, woven or non-woven fabrics, home textiles, including flags, signal flags, handkerchief, clothing being inner and outer clothing made from all kinds of material, except clothing for protective purposes, socks, footwear, headgear, lace and embroidery, guipures, eyelets, narrow woven, ribbons and braid, heading tapes, cords, ready-made letters and numbers made of fabric for clothes, blazons, rank marks, shoulder pads for clothing, buttons, hooks and eyes, pins and needles, zippers, shoe and belt buckles, rivets, adhesive tapes, strings, sewing needles, sewing machine needles, crochet hooks and knitting needles, needle cases , pincushions, artificial flowers, artificial fruits, false hair, hair ornaments, carpets, rugs, floor coverings made of synthetic material, oilcloth, artificial grass, cork oilcloth linoleum for furnishing, gymnastic mats, wrestling cushions, non-textile wall coverings, wallpaper, games and toys, devices, machines and apparatus for games played in game rooms including operated with coins, toys for animals, toys for their place of play, toys for children's gardens, parks and game parks, gymnastic and sports devices and materials, artificial Christmas trees and decorations thereof, artificial snow, bells, entertainment decorations namely, party, discotheque decorations, party hats, meat, fish, poultry and game meat, and all kind of processed meat products, dry legumes, ready-made soups and bouillon, olives and olive paste, milk and milk products including butter, edible vegetable oils, dried, canned, frozen, cooked, smoked, brined all kind of fruits and vegetables, dried fruits, hazelnut and pistachio pastes, tahini being sesame seed paste, eggs, egg powders, potato chips, coffee, cocoa, coffee substitutes, coffee or cocoa based beverages, chocolate based beverages, macaroni, meat pasty, noodles, pastry and bakery products, desserts, honey, royal jelly, propolis being bee gum, condiments for foodstuff, yeasts, baking powder, all kinds of flour, semolina, com starch, crystal sugar, cubed sugar, powdered sugar, tea, iced tea, confectionery, chocolates, biscuits, crackers, waffles, chewing gums, ice creams, edible ice, salt, grain based cereals and products made from cereal, molasses, forestry products, live animals including incubator eggs, fertilized eggs, live and dried plants and herbs, animal feed, malt not for human use, beers, preparations used in the making of beer, mineral water, spring water, drinking water, sodas, vegetable and fruit drinks, vegetable and fruit concentrates and extracts, alcoholic drinks, except for beers, processed or unprocessed tobacco, smoker's articles not made of precious metals, their alloys or coated therewith including mouthpieces for pipes, cigars and cigarettes, ashtrays for smokers, tobacco boxes, pocket devices to wrap cigarettes, cigarette papers, nargileh, flint stones, cigar lighters, matches in International Class 35;

Radio and television broadcasting services; electronic transmission and delivery of radio, television digital music, satellite images by wireless communication networks; radio and telephone communication services; providing access for users to the global computer network and Internet; rental of communication apparatus and implements; news agencies, namely, the transmission of news items to news reporting organizations in International Class 38;

Educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity}; organization of conferences, symposiums, seminars and congresses in relation to continuing business and business management educational courses of instruction; providing sports information; entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows; publication of books, publication of periodicals; production of radio and television programs except commercials; production of cine-films; news reporters services, photographic reporting services; photography services; translation services in International Class 41.

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.

DESCRIPTION OF MARK 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 term onedio in stylized lower-case letters with 2 smaller shaded circles overlapping the lower left portion of the first letter o.

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. §§2.62(c), 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.

/Mark T. Mullen/

Examining Attorney

Law Office 111

(571) 272-9201

Mark.Mullen@uspto.gov (informal inquiries only)

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.