UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79247685
MARK: BOE CHPI
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: BOE TECHNOLOGY GROUP CO., LTD.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1439657
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.
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).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
IDENTIFICATION OF GOODS AND SERVICES
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
For the reasons set forth below, the identification of goods and services needs clarification because it is, in part, indefinite. TMEP §1402.01. The portion of the identification that is unacceptable is in bold below with the explanation and/or suggestion in brackets. The remainder of the identification is acceptable.
International Class 9:
Calculating machines; data processing apparatus; computers; computer peripheral devices; monitors, [computer hardware] [computer monitors]; processors [central processing units] [computer central processing units]; electronic pocket translators; integrated circuit cards [smart cards] [integrated circuit cards]; smart cards [integrated circuit cards] [smart cards being integrated circuit cards]; notebook computers; video game cartridges; laptop computers; tablet computers; computer hardware; smart glasses [data processing] [smart glasses]; smart watches [data processing] [smart watches]; interactive touch screen terminals; electronic interactive whiteboards; humanoid robots with artificial intelligence; smart ring [data processing] [smart rings]; pedometers; counters [the specific types of these goods must be listed, the following is suggested: {indicate type, e.g., Geiger, thread, etc.} counters]; quantity indicators [the specific types of these goods must be listed, the following is suggested: Scientific instruments, namely, electronic analyzers for testing and analyzing chemical and biological substances for the quantity of {specify, e.g., target chemicals, biologics, contaminants, etc.}]; parking meters; time recording apparatus; chronographs [time recording apparatus] [chronographs for use as specialized time recording apparatus]; electronic agendas; automated teller machines [ATM] [automated teller machines (ATM)]; ticket dispensers [the specific types of these goods must be listed, the following is suggested: electronic parking lot ticket dispensers]; face recognition device [the class 9 nature of these goods must be clarified, the following is suggested: face recognition computer hardware]; punched card machines for offices; phototelegraphy apparatus; plotters; attendance machines [the class 9 nature of these goods must be clarified, the following is suggested attendance counting machines]; neon signs; electronic notice boards; digital signs; radios; intercommunication apparatus [the specific types of these goods must be listed, the following is suggested: intercommunication apparatus, namely, {indicate types, e.g., apparatus for transmission of communication}]; navigational instruments [the specific types of these goods must be listed, the following is suggested: electric navigational instruments]; radiotelephony sets; vehicle radios; telephone apparatus; video telephones; smartphones; mobile telephones; cell phones; monitoring apparatus, electric [the specific types of these goods must be listed, e.g., electronic monitors for monitoring flowmeters, electronic monitors and monitor modules for monitoring electric current and electrical signals, etc.]; audio and video receivers; television apparatus [the specific types of these goods must be listed, the following is suggested: television apparatus for projection purposes]; teleprompters; camcorders; portable media players; digital photo frames; electronic book readers; video baby monitors; television camera; automatic advertising players [the nature of these goods must be clarified, the following is suggested: automatic advertising players, namely, {indicate type, e.g., near field communication (NFC) tags for providing advertising information, electronic advertisement and messaging display unit with multi-networking (TCP/IP) capabilities and remote connectivity, etc.}]; learning machines [the nature of these goods must be listed, the following is suggested: learning machines being computer hardware]; electronic teaching machines [the specific types of these goods must be listed, the following is suggested: electronic teaching machines, namely, {indicate types, e.g., teaching robots, electronic sports training simulators, etc.}]; virtual reality headsets; automobile data recorders [electronic automobile data recorders]; cameras [photography] [cameras for photography]; slide projectors; transparency projection apparatus; viewfinders, photographic; audiovisual teaching apparatus [the specific types of these goods must be listed, the following is suggested: audiovisual teaching apparatus, namely, {indicate types, e.g., electronic clinicians training simulators, electronic sports training simulators, etc.}]; wafers for integrated circuits.
International Class 38:
Message sending [the class 38 nature of these services must be clarified, e.g., electronic message sending]; computer aided transmission of messages and images; electronic bulletin board services [telecommunications services] [electronic bulletin board services]; streaming of data
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 guidelines. For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Jonathan Falk/
Jonathan R. Falk
Trademark Examining Attorney
Law Office 111
(571)272-5301
Jonathan.falk@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.