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. 1412269

 

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 issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Likelihood of confusion with U.S. Registration No. 5511604, 5321249, 5447922, 5261155, 5081604.
• Identification for goods are indefinite
• Significance of mark required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5511604, 5321249, 5447922, 5261155, 5081604.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods.”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Applicant’s mark is “AIBO” for “Robots for entertainment; computer software for operating physical robots; control apparatus, in particular remote controls for operating robots for entertainment; humanoid robots with artificial intelligence; dance performance robots for events; humanoid robots with two legs for research, engineering, support or entertainment; robots for hotel industry and service industry (excluding those for medical or entertainment sectors); monitoring robots for domestic and professional use (excluding those for industry, medical or entertainment sectors); telecommunications devices apparatus, instruments; electrical machines and apparatus and their parts, namely, tablet computers, laptop computers, notebook computers, computers, pre-installed and downloadable software for use with electronic apparatus for home entertainment, tablets and smart phones for broadcasting, recording and improvement of sound and video, for processing and decompressing of images and data and for receiving, reproducing, transmitting, modifying and merging sounds, video images, graphics and data, computer peripheral devices, namely, printers, scanners, mice, trackballs, keyboards, monitors, headphones, microphones, game programs for home video game machines, electronic circuits and CD-ROMs recorded with programs for portable games with liquid crystal displays, sound recording discs, downloadable music files, downloadable video files, recorded video discs and video tapes, exposed cinematographic films, exposed slide films, sliding film media and electronic lock assembly; artificial intelligence computer software; animal robots with artificial intelligence; computer programs with artificial intelligence technology; application software for smartphones; robots for personal use or for recreation, having movement and mobility of animals, and structural parts therefor” in International Class 9.

 

Registrant 1’s mark is “AIBOCN” for “Alarm installations and alarms; Alarm monitoring systems; Alarm sensors; Automatic pill counters; Batteries, electric; Battery chargers; Cabinets for loudspeakers; Car video recorders; Cases for smartphones; Computer peripheral equipment; Dog whistles; Electric cables and wires; Electric cables, wires, conductors and connection fittings therefor; Electric door bells; Electric navigational instruments; Electronic collars to train animals; Fire alarms; Geiger counters; Global positioning system (GPS) apparatus; Headphones; Locks, electric; Monitoring devices for monitoring battery performance characteristics; Portable media players; Smartglasses; Smartwatches; Surveying instruments; Surveying machines and instruments; Thread counters; Wearable activity trackers; Weighing apparatus and instruments; Wire connectors” in International Class 9.

 

Registrant 2’s mark is “AIBOS” for “Acoustic membranes; Alarm monitoring systems; Audio-video receivers; Cabinets for loudspeakers; Earphones; Headphones; Horns for loudspeakers; Loudspeakers; Megaphones; Microphones; Personal stereos; Portable media players; Sound recording apparatus; Sound transmitting apparatus” in International Class 9.

 

Registrant 3’s mark is “AIBOLE” for “Camcorders; Cell phone covers; Chargers for batteries; Computer hardware; Computer hardware and computer peripheral devices; Computer hardware and peripheral devices and computer software for data communication and translating and transmitting data sold therewith; Computer keyboards; Computer memories; Computer mouse; Data processing apparatus; Earphones and headphones; Electric wires; Electronic video surveillance products, namely, electronic components of security systems; Global positioning system (GPS); Mouse pads; Network routers; Pedometers; Power adapters; Scales; Stands for photographic apparatus; Tripods for cameras; Underwater cameras; Video monitors; Video telephones; Video baby monitors; Voltage stabilizing power supply; Webcams; Batteries and battery chargers; Rechargeable electric batteries” in International Class 9.

 

Registrant 3’s second mark is “AIBOLE” for “Camcorders; Cameras; Cell phone covers; Computer hardware; Computer hardware and peripheral devices; Computer hardware and peripheral devices and computer software for data communication and translating and transmitting data sold therewith; Computer keyboards; Computer memories; Computer mouse; Data processing apparatus; Earphones and headphones; Electronic video surveillance products, namely, electronic components of security systems; Global positioning system (GPS); Mouse pads; Network routers; Pedometers; Power adapters; Scales; Stands for photographic apparatus; Tripods for cameras; Underwater cameras; Video-telephones; Video monitors; Video baby monitors; Voltage stabilizing power supply; Webcams; Wires, electric; Rechargeable electric batteries” in International Class 9.

 

Registrant 4’s mark is “AIBOUSA” for “Armbands specially adapted for personal electronic devices, namely, mobile phones, MP3 players; Backpacks especially adapted for holding laptops and notebook computers; Battery charge devices; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, cell phones, MP3 players and personal digital assistants; Cell phone cases; Cell phone covers; Disposable keyboard covers; Electronic charging devices for tablet PCs that also include features to secure and disinfect the tablet PCs; Keyboard covers; Notebook computer carrying cases; Renewable battery system to provide backup power” in International Class 9.

 

Comparing the marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). The first and dominant portion of the cited marks and the sole and dominant portion of the applied-for mark are identical.

 

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part and because they are identical in part, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

The fact that some of the cited marks appear with design elements and/or stylization does not diminish the overall similar commercial impression with the applied-for mark because the applied-for mark appears in standard character. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks are confusingly similar. 

 

Please note: The Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services.  In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).

 

Based on the foregoing, the marks are sufficiently similar to find a likelihood of confusion.

 

Comparing the goods

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Registrant 1

 

The registration uses broad wording to describe Computer peripheral equipment; Locks, electric, which presumably encompasses all goods of the type described, including applicant’s more narrow computer peripheral devices, namely, printers, scanners, mice, trackballs, keyboards, monitors, headphones, microphones, game programs for home video game machines, electronic circuits and CD-ROMs recorded with programs for portable games with liquid crystal displays.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Registrant 2

 

The application uses broad wording to describe “telecommunications devices apparatus, instruments; electrical machines and apparatus and their parts, namely, tablet computers, laptop computers, notebook computers, computers, pre-installed and downloadable software for use with electronic apparatus for home entertainment, tablets and smart phones for broadcasting, recording and improvement of sound and video, for processing and decompressing of images and data and for receiving, reproducing, transmitting, modifying and merging sounds, video images, graphics and data, computer peripheral devices, namely, printers, scanners, mice, trackballs, keyboards, monitors, headphones, microphones, game programs for home video game machines, electronic circuits and CD-ROMs recorded with programs for portable games with liquid crystal displays, sound recording discs, downloadable music files, downloadable video files, recorded video discs and video tapes, exposed cinematographic films, exposed slide films, sliding film media and electronic lock assembly”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Earphones; Headphones; Sound recording apparatus; Sound transmitting apparatus”.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Registrant 3

 

The registrations use broad wording to describe “Camcorders; Cell phone covers; Chargers for batteries; Computer hardware; Computer hardware and computer peripheral devices; Computer hardware and peripheral devices and computer software for data communication and translating and transmitting data sold therewith; Computer keyboards; Computer memories; Computer mouse; Data processing apparatus; Earphones and headphones; Electric wires; Electronic video surveillance products, namely, electronic components of security systems; Global positioning system (GPS); Mouse pads; Network routers; Pedometers; Power adapters; Scales; Stands for photographic apparatus; Tripods for cameras; Underwater cameras; Video monitors; Video telephones; Video baby monitors; Voltage stabilizing power supply; Webcams; Batteries and battery chargers; Rechargeable electric batteries”, which presumably encompasses all goods of the type described, including applicant’s more narrow “telecommunications devices apparatus, instruments; electrical machines and apparatus and their parts, namely, tablet computers, laptop computers, notebook computers, computers, pre-installed and downloadable software for use with electronic apparatus for home entertainment, tablets and smart phones for broadcasting, recording and improvement of sound and video, for processing and decompressing of images and data and for receiving, reproducing, transmitting, modifying and merging sounds, video images, graphics and data, computer peripheral devices, namely, printers, scanners, mice, trackballs, keyboards, monitors, headphones, microphones, game programs for home video game machines, electronic circuits and CD-ROMs recorded with programs for portable games with liquid crystal displays”.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Registrant 4

 

The attached Internet evidence, consisting of screenshots of entities that provide both Backpacks especially adapted for holding laptops and notebook computers; Battery charge devices; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, cell phones, MP3 players and personal digital assistants; Cell phone cases; Cell phone covers; Disposable keyboard covers; Electronic charging devices for tablet PCs that also include features to secure and disinfect the tablet PCs; Keyboard covers; Notebook computer carrying cases; Renewable battery system to provide backup power and also provide electrical machines and apparatus and their parts, namely, tablet computers, laptop computers, notebook computers, computers, establishes that the same entities commonly provide the relevant goods and market the goods under the same mark, the relevant goods are sold and provided through the same trade channels and used by the same classes of consumers in the same fields of use, the goods are similar and complementary in terms of purpose and function:

 

• http://www.apple.com/ipad/
• http://www.apple.com/mac/
• http://www.apple.com/shop/accessories/all-accessories/cases-protection
• http://www.apple.com/shop/accessories/all-accessories/power-cables
• http://www.apple.com/shop/mac/mac-accessories/cases-protection?page=1&fh=4592%2B45bc#!&f=backpack-bag&fh=4592%2B45bc%2B45bd
• http://www.samsung.com/us/mobile/tablets/
• http://www.samsung.com/us/mobile/mobile-accessories/all-mobile-accessories/s/cases_covers/_/n-10+11+hv1rt+tror6/
• http://www.samsung.com/us/mobile/mobile-accessories/all-mobile-accessories/s/chargers_batteries/_/n-10+11+hv1rt+tror8/
• http://www.samsung.com/us/mobile/mobile-accessories/all-mobile-accessories/s/keyboards_mice/_/n-10+11+hv1rt+trora/
• http://www.samsung.com/us/computing/windows-laptops/
• http://www.microsoft.com/en-us/
• http://www.microsoft.com/en-us/surface/devices/surface-book-2/overview
• http://www.microsoft.com/en-us/store/b/surface-accessories
• http://www.microsoft.com/en-us/store/collections/surfacepowerdock?cat0=devices&icid=Cat_SurfaceAccTest-QckLink3-PowerDocks-04192018-en-us
• http://www.microsoft.com/en-us/store/collections/surfacebagsandsleeves/pc?cat0=devices&icid=Cat_SurfaceAccTest-QckLink4-BagsSleeves-04192018-en-us
• http://www.microsoft.com/en-us/store/collections/surfacependialmouse?cat0=devices&icid=Cat_SurfaceAccTest-QckLink2-PenMice-04192018-en-us

 

Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Based on the analysis above, applicant’s and registrants’ goods are related.

 

Because applicant’s and registrants’ marks are similar and the goods are related there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS/SERVICES

 

The identification of goods and services is indefinite and must be clarified to further specify the type, function, nature, use, and/or subject matter of certain items, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Also, the identification of goods and 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 or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

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

 

Additionally, applicant has included the term “or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the nature of the goods is unclear.

 

An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language. 

 

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

The following substitute wording is suggested in bold, if accurate: 

 

CLASS 009

 

Robots for entertainment {indicate specific type/nature/function of goods, i.e., in the nature of Tactical robots}; computer software for operating physical robots; control apparatus, in particular remote controls for operating robots for entertainment; humanoid robots with artificial intelligence; dance performance robots for events {indicate specific type/nature/function of goods, i.e., in the nature of Humanoid robots with artificial intelligence}; humanoid robots with two legs for research, engineering, support and entertainment {indicate specific type/nature/function of goods, i.e., in the nature of Humanoid robots with artificial intelligence}; robots for hotel industry and service industry excluding those for medical or entertainment sectors {indicate specific type/nature/function of goods, i.e., in the nature of Humanoid robots with artificial intelligence}; monitoring robots for domestic and professional use excluding those for industry, medical and entertainment sectors {indicate specific type/nature/function of goods, i.e., in the nature of Humanoid robots with artificial intelligence}; telecommunications devices apparatus and instruments {indicate specific type/nature/function of goods, i.e., in the nature of Humanoid robots with artificial intelligence}; electrical machines and apparatus and their parts, namely, tablet computers, laptop computers, notebook computers, computers, pre-installed and downloadable software for use with electronic apparatus for home entertainment {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content or field-specific, the content or field of use}}, tablets {indicate specific type/nature/function/purpose of goods, i.e., namely, pc tablets} and smart phones {indicate specific type/nature/function/purpose of goods, i.e., namely, Digital cellular phones} for broadcasting, recording and improvement of sound and video, for processing and decompressing of images and data and for receiving, reproducing, transmitting, modifying and merging sounds, video images, graphics and data, computer peripheral devices, namely, printers, scanners, mice, trackballs, keyboards, monitors, headphones, microphones, game programs for home video game machines {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Computer programs for pre-recorded games}, electronic circuits and CD-ROMs recorded with programs for portable games with liquid crystal displays {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Computer game programs, cartridges, and cassettes}, sound recording discs {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Blank record disks}, downloadable music files, downloadable video files {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Downloadable multimedia file containing video relating to {indicate field of subject matter of file}}, recorded video discs and video tapes {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Pre-recorded digital video discs featuring {indicate subject matter}}, exposed cinematographic films, exposed slide films, sliding film media {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Exposed slide films} and electronic lock assembly; artificial intelligence computer software {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Exposed slide films}; animal robots with artificial intelligence indicate specific type/nature/function/purpose of goods, i.e., in the nature of Laboratory robots}; computer programs with artificial intelligence technology {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Virtual reality software for {indicate the function of the software, e.g., playing computer games, pilot training, medical teaching, etc.}}; application software for smartphones {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Computer application software for mobile phones, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}}; robots for personal use or for recreation, having movement and mobility of animals, {indicate specific type/nature/function/purpose of goods, i.e., in the nature of Humanoid robots with artificial intelligence} and structural parts therefor

 

CLASS 028

 

Robots as toys {indicate specific type/nature/function of goods, i.e., in the nature of Toy robots}; animal robots as toys {indicate specific type/nature/function of goods, i.e., in the nature of Toy robots}

 

CLASS 042

 

Design and development of robots, computer hardware, computers and software; robotic engineering services; cloud computing {indicate specific type/nature/function of services, i.e., in the nature of Providing virtual computer systems and virtual computer environments through cloud computing}; rental of computer programs {indicate specific type/nature/function of services, i.e., in the nature of Rental of computer software and programs}

 

Class 37 is definite.

 

Please note: 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 narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  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 narrowed.  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).  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.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “AIBO” has any significance as applied to applicant’s goods and services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

COMMENTS

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

For this application to proceed further, 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 specified in this Office action for responding to a refusal, and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02. 

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (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. 

 

 

 

 

Clinton Johnson

/Clinton Johnson/

Trademark Examining Attorney

Law Office 107

571-272-0425

clinton.johnson@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.