UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79217468
MARK: LEDVANCE
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CORRESPONDENT ADDRESS: df-mp Dörries Frank-Molnia & Pohlman, |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: LEDVANCE GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1337752
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, 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).
The applicant must address the following issues:
PROCEDURAL ISSUES
Identification of Goods and/or Services Requirement
International Class 009: Applicant has identified the goods and/or services as “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, control, life-saving and teaching apparatus and instruments; signalling apparatus and instruments; electrical apparatus and instruments as well as apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of images; projectors; picture projectors; magnetic data carriers; data processing devices and computers; computer programs and software of all kind (included in this class); software applications [apps] for electrical- and communication devices; LEDs (light emitting diodes) and laser diodes (also organic LEDs and laser diodes); light conductors, optical couplers, optical sensors, light barriers, light-emitting diodes [LED] for lamp modules, also for signaling purposes; displays using LED-technology; electric and electronic devices and apparatus for the operation, regulation and control of lighting facilities, luminaires and lamps for central building control systems and for the regulation and control of building installations, especially interface modules for such apparatus and devices as well as transformers and electronic ballasts; miniature transformers, choking contact elements including plugs, terminals, junction sleeves for electrical cables, switch gears, electric breakers [switches]; parts of all the aforesaid goods included in this class.”
International Class 010: Applicant has identified the goods and/or services as “Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials and surgical sutures; medical radiation apparatus and lighting apparatus; parts of all the aforesaid goods included in this class.”
International Class 011: Applicant has identified the goods and/or services as “Lighting apparatus, especially electric lamps and luminaires; lighting apparatus and lighting systems consisting thereof, especially on the basis of LEDs (also organic LEDs), LED lamps and LED luminaires and their parts, included in this class; lighting lamps and apparatus and devices and systems consisting thereof as well as their parts (included in this class) on the basis of LEDs; light modules and lights with organic or non-organic light-emitting diodes (LEDs) as means of lighting.”
International Class 016: Applicant has identified the goods and/or services as “Printed matter, especially journals, newspapers, books, catalogues and prospectuses.”
International Class 028: Applicant has identified the goods and/or services as “Games, toys; gymnastic and sports articles, included in this class; Christmas tree decorations; parts of all the aforesaid goods included in this class.”
International Class 035: Applicant has identified the goods and/or services as “Provision of advertising space; direct mail advertising; preparation and presentation of audio-visual displays for advertising purposes; provision of space on web- sites for advertising goods and services; distribution of advertising material; dissemination of advertisements; dissemination of advertising for others; rental of advertising space on the Internet; advertising by mail order; handbill distribution; business management.”
International Class 037: Applicant has identified the goods and/or services as “Building construction; repair and installation works for the construction of lighting systems and advisory service thereto; installation, repair and maintenance of solar systems, solar power plants and products on the field of solar energy, namely solar cells, solar cell units, solar panels, solar modules and solar connectors, solar power plants and power plants operated on the basis of fossil resources.”
International Class 042: Applicant has identified the goods and/or services as “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and computer software; design and technical planning of installations for lighting and consultancy services relating thereto; architectural services and design of interior decor, especially in the field of illumination; providing non-downloadable software, namely planning and simulation programs for illumination applications, also via the Internet.”
The identification of goods and/or services contains parentheses and brackets. Generally, parentheses and brackets should not be used in identifications. TMEP §1402.12. The USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations. See id. 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).” Id.
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
The identification of goods and/or services is indefinite and must be clarified because various elements in the wording are excessively broad and may include goods/services in multiple international classes. The examining attorney notes below in bold where additional specification/clarification is needed. See TMEP §§1402.01, 1402.03(a).
Applicant may amend the identification to list only those items that are within the scope of the goods and/or services 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 international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).
Therefore, any modification to this wording must identify goods and/or services that are within the scope of the goods and/or services set forth in the present identification.
The following substitute wording is suggested, if appropriate:
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Color Claim Requirement
If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). Generic color names must be used to identify the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).
Therefore, applicant must provide the required color claim. The following is suggested, if accurate: “The colors orange, cream, and white are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Mark Description Requirement
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the word “LEDVANCE” in orange with a concentric circle design to the left with the circles going from white to cream, to orange from the center to the outside.
Entity Requirement
Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). 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 to Office Action form, applicant must open the response form, answer “Yes” to wizard question number 5, find the “Owner Information” page, and do the following: (1) locate the “Entity Type” heading on that page 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.
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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.
/mvaghani/
Mayur Vaghani
Examining Attorney
Law Office 124
Phone: (571) 272-1615
Fax: (571) 273-9102
mayur.vaghani@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.