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

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/24/2018

 

 

INTERNATIONAL REGISTRATION NO. 1372333

 

This application was approved for publication on 06/28/18.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Applicant’s attorney is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action. 

 

Identification of the Goods and/or Services

 

The following goods and/or services remain indefinite for the reasons stated below.

 

Class 9

 

“Transparencies” are indefinite and overly broad as they may be inclusive of “photographic transparencies” in Class 9, and “paper and plastic transparencies” are in Class 16.  “Ionizers” is indefinite and overly broad as it may encompass “ionizers for scientific or laboratory use” in Class 9 or “water ionizers” in Class 11.  Please also delete the question mark after the wording.  Please also delete the question mark at the beginning of the “?fire-extinguishing apparatus” identification.  “Teeth protectors, namely, mouth guards” is indefinite and overly broad because, as worded, the goods are inclusive of “mouth guards for athletic use” in Class 9 and “mouth guards for medical purposes” in Class 10.  “Densitometers” are indefinite and too broadly identified as they are presently inclusive of “densitometers not for medical use” in Class 9 and “densitometers for medical use” in Class 10.  “Automated teller machines ATM” should be amended to place parentheses around “ATM” as it is the acronym for the stated identification.  Parentheses should also be placed around “GPS” in “global positioning system GPS apparatus” and around “LED” in the identification “light-emitting diodes LED” as both “GPS” and “LED” are explanatory acronyms within the definite identifications.   “Telerupter” appears to be misspelled, please amend to “teleruptors,” if accurate.  See http://www.wikiteka.com/document/domestic-electrical-installations/   As the application is based on Section 66(a) all clarifications of the identification must be to make the IDs definite within the class assigned to the goods by the IB.  Section 1401.03(d).

 

 

Class 16

 

“Mats for beer glasses” is indefinite and possibly overly broad as it may encompass goods in multiple classes.  The identification appears to be for coasters.  If so, then the material content of the goods must be identified in order to be definite.  As the application is based on §66(a), any clarification to the identification must be to make it definite within the class assigned to the goods by the IB.  TMEP §1401.03(d).  For example, if the goods are coasters, then paper and cardboard are acceptable materials for the goods.  “Clips for office use” may be clarified to identify particular goods to allow for third parties to make accurate likelihood of confusion assessments and to ensure that unnecessary refusals of registration do not issue.  TMEP §1402.01.  For example, “clips for letters,” “paper clips,” “binder clips,” and “clips for name badge holders” are all acceptable identifications in Class 16 are for use in an office environment.  “Arithmetical tables” should be clarified as “printed arithmetical tables” to ensure that the identification is definite.  This is in keeping with the Class 16 Class Heading which is “printed matter.”  TMEP §1401.02(a).  “Paper sheets” may be clarified to indicate a Class 16 purpose, e.g., paper sheets for note taking, to prevent confusion with goods in other classes.  TMEP §§1401.03(d), 1402.01.  “Chalk holders” is indefinite and overly broad as it may be inclusive of goods in Classes 16 and 28.  Applicant, in order to clarify its Class 16 goods, may adopt “writing chalk and marking chalk holders,” if accurate.  TMEP §1401.03(d).  “Photographs printed” may be amended to place “printed” in front of “photographs” for a grammatically correct entry or a comma may be placed between the wording to make it clear that “printed” is the type of “photograph.” 

 

 

Class 25

 

“Furs” must be clarified to identify definite Class 25 goods.  Applicant may adopt, if accurate, “furs being clothing.”  TMEP §1401.03(d).  Please clarify the goods.  “Corsets” are indefinite and overly broad as the identification encompasses goods in multiple classes.  Applicant must identify definite Class 25 goods, e.g., corsets being clothing, corsets being foundation clothing.  See id.  “Layettes” may be clarified to identify “clothing layettes.”  “Leggings trousers” needs to be clarified as it currently is unclear if it is identifying “leggings in the nature of trousers” or both “leggings” and “trousers” as separate entries.  Please clarify to provide the requisite necessary definiteness and clarity for an identification.  TMEP §14.01.02.  

 

 

Class 28

 

For clarity and ease of reading, applicant may amend “caps for pistols toys” to “caps for toy pistols.”  “Playing balls” should be clarified to provide the particular activity or general subject matter of the playing for which the balls are intended in order to provide a definite identification which allows third parties to make accurate likelihood of confusion determinations and prevents unnecessary refusals of registration.  TMEP §1401.03(d).  For example, balls for playing games and sports, may be adopted, if accurate.  “Matryoshka dolls wooden nested Russian dolls,” to be definite, should be amended to place a semicolon between “dolls” and “wooden” to separate the wording into two separate entries or applicant may amend to incorporate the wording into a single, definite identification, e.g., matryoshka dolls being wooden nested Russian dolls.  Please clarify. 

 

 

Class 35

 

Acceptable as written.

 

 

Class 36

 

“Issuing tokens of value, namely, stored value tokens and stored value paper for use in purchasing goods and services of others, namely, processing electronic payments made through prepaid cards” and “issuing tokens of value for the payment of transportation of articles, namely, processing electronic payments made through prepaid cards” are both inclusive of services that appear to be definite as separate services and the wording after “namely” is ambiguous as it is not clarifying wording for the wording preceding namely.  Please clarify the services accordingly.  “Issuing stored value cards, namely, processing electronic payments made through prepaid cards” is ambiguous as it identifies two separate services, one before “namely” and a different service after “namely.”  Wording after “namely” is meant to be used to clarify the wording that appears before “namely.”   Here, the wording both before and after “namely” is definite and should be so clarified. 

 

 

Class 38

 

For clarity, applicant should amend “Telex communication services” to “Communications by telex.”

 

Class 41

 

“Providing on-line non-downloadable electronic publications, namely, publication of electronic books and journals in the field of business” is ambiguous as the wording before “namely” indicates that the applicant is providing the online non-downloadable publications, however, the wording after “namely” indicates that applicant is providing a “publication” service.  Please clarify the services, e.g., “providing on-line non-downloadable electronic publications in the nature of books and journals in the field of business” and “publication of electronic books and journals in the field of business.”   Please delete the extra space between “video games” and the comma following it which is before “animated films.” 

 

 

Class 42

 

“Computerized data management, namely, updating and maintenance of data in computer databases” is a definite Class 35 identification that was not part of the Class 42 identification as originally filed with the application.  Only definite but misclassified identifications filed with the original application are allowed to proceed in a §66(a).  If the applicant amends an indefinite identification, the clarification must be definite within the class assigned to the original identification by the IB.   If the original identification cannot be made definite within the assigned class, applicant may delete it from the application.  Please clarify “computerized data management” within Class 42 or please delete the services.  “Calibration measuring” is inclusive of the bracketed wording “measuring” which is intended as clarifying wording.  Applicant should either delete “measuring” as “calibration” is acceptable on its own or the wording should be incorporated in a grammatically correct manner, e.g., calibration being measuring.  Please clarify the services.  “Software as a service SaaS” is indefinite and must be clarified to identify what the actual services related to software as a service are.  For example, applicant may adopt “consulting services in the field of software as a service (SaaS),” if accurate or applicant may indicate what the function of the software featured through the SaaS services is.  Please clarify the services accordingly.

 

 

Class 43

 

Acceptable as written.

 

 

Class 45

 

“Airport baggage inspection for security purposes” is ambiguous and is not acceptable, consistent with Nice 11-2017.  Applicant may adopt “baggage handling inspections for airlines,” if accurate.

 

Advisory

 

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.

 

Response

 

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.

 

 

 

/David A. Hoffman/

Examining Attorney

Law Office 107

(Ph) 571-272-8805

(Fx) 571-273-8805

Email:  david.hoffman@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/24/2018 FOR U.S. APPLICATION SERIAL NO. 79219607

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/24/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.