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. 1459032

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Advisory – Prior-Filed Application
• Identification Requirement for International Classes 9, 25, 28, 32, 35, and 38
• Mark Description Requirement

 

SECTION 2(D) ADVISORY – PRIOR-FILED APPLICATION

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No.  88236480 and 88236476 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION REQUIREMENT FOR INTERNATIONAL CLASSES 9, 25, 28, 32, 35, AND 38

 

Applicant has identified the following goods and/or services:

 

International Class 9: “Electric, electronic and optical measuring, signalling and checking (supervision) apparatus and instruments, included in class 9, namely electric electroacoustics apparatus and instruments and parts thereof; apparatus and instruments for recording, transmission and reproduction of audio signals and parts thereof, included in class 9; apparatus for recording and reproduction of electric signals, in particular audio signals; apparatus for the remote transmission of acoustic information; apparatus for transmission, broadcasting and reception of audio or video signals, in particular high- frequency sound transmitting apparatus and apparatus for sound transmission technology; pocket transmitters and receivers, in particular pocket transmitters and receivers in the UHF and VHF range, and parts thereof; diversity receivers; small earphones; antennas; narrow-band system and broadband system apparatus for use in sound transmission technology; transmitters, in particular multi-channel transmitters, single-channel transmitters, HF transmitters; receivers, in particular multi-channel, single-channel and dual-channel receivers, HF receivers, headset receivers, stethoset receivers, and parts thereof; apparatus for sound transmission and reproduction apparatus; head-set systems; conference systems consisting of microphone units, loudspeakers, monitors and telephones; devices for the analogue and digital transmission of audio and video and data signals; software for the control, tuning and checking of the aforesaid systems; data carriers equipped with programs; software, in particular recorded on compact discs (CD-ROMs), DVDs, hard discs, and on volatile and non-volatile memories; conference and telecommunications technology apparatus and instruments; microphones, in particular dynamic microphones, condenser microphones, electret microphones, headset microphones, gooseneck microphones, shotgun microphones, wireless microphones, clip-on microphones, microphones with integrated transmitters, condenser microphones, microphone modules, pressure microphones, switchable microphones, microphone capsules, and parts for the aforesaid goods; microphone isolating distributors; apparatus for transmitting sound, data or images; microphone cases; electroacoustic transducers, in particular headphones, dynamic headphones, electrostatic headphones, wireless headphones, headphones for use in vehicles and aeroplanes, in particular with high- frequency transmission, headphones with active noise cancellation, loudspeakers including wireless loudspeakers; parts and accessories for electroacoustic transducers and headphones, namely ear pads, volume controls, amplifiers, battery plugs, plug-in chargers, handset cords; electro-acoustic and visual identifiable guide systems, including multi-lingual guide systems, consisting of transmitters and receivers, in particular sound signal receivers and headphones; apps (software) for controlling sound recording and reproduction apparatus; apps (software) for recording and reproduction of audio signals”

 

International Class 15: “Electric and electronic musical instruments”

 

International Class 25: “Clothing, footwear, headgear [caps]”

 

International Class 28: “Games and playthings; gymnastic and sporting articles, not included in other classes”

 

International Class 32: “Beers; mineral water [beverages]; aerated water; non-alcoholic beverages; fruit drinks; juices; syrups for making beverages; preparations for making beverages”

 

International Class 35: “Display of goods for promotion purposes; outdoor advertising; banner advertising; counselling on business matters; business management consulting; advertising, marketing and promotional consultancy, advisory and assistance services; consulting services in the field of internet marketing; digital advertising services; retail services in relation to audiovisual equipment and apparatus; retail services of electronic appliances, headphones, microphones; development and implementation of marketing strategies for others; development of business concepts; development of sales promotion campaigns; assistance services for the management of retail companies; business assistance; business management and administrative services; dissemination of printed advertising material, for others; dissemination of advertising for others via the internet; retail sales promotion; promotion services for the goods and services of others; distribution of advertising, marketing and promotional material; presentation of goods; advertising and sales promotion services”

 

International Class 38: “Audio communications services; audio teleconferencing; audiovisual communication services; consultancy services relating to data communications; providing access to databases on computer networks and the internet; computerized communication services; data broadcasting services; wireless electronic transmission of images; wireless electronic transmission; wireless electronic transmission of audio signals; network conferencing services; electronic communications and telecommunications; transmission of information, data, advertisements, musical compositions, films, radio broadcasts, television programs via wireless or cable networks, in particular in the form of online internet services; video communication services; videoconferencing”

 

The wording “electric electroacoustics apparatus and instruments and parts thereof” in the identification of goods is indefinite and must be clarified because applicant must specify the apparatus being offered, such as an electric apparatus for wireless transmission of acoustic information.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Similarly, the wording “apparatus and instruments for recording, transmission and reproduction of audio signals and parts thereof; apparatus for recording and reproduction of electric signals, in particular audio signals.” Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id. Furthermore, the wording “transmitters; receivers” is indefinite and must be clarified because applicant must specify the types of transmitters and receivers, such as radio or audio. Similarly, applicant must clarify the wording “volatile and non-volatile memories” by specifying the function of the software, such as word processing. In International Class 25, the word “clothing” is indefinite, as applicant must specify the particular types of clothing offered. Further, applicant must specify the type of cap, such as a baseball cap. In International Class 28, applicant must specify the type of game, and type of article for gymnastics and sporting purposes. In International Class 30, applicant must specify that all of the beverages are fruit-related. Finally, in International Class 38, applicant must specify that it is “providing” the services mentioned.

 

Furthermore, the word “parts” alone is generally unacceptable, and must be replaced with the wording “structural parts and fittings thereof.”  See TMEP §1402.03(a)

 

Additionally, the identification of goods and services contains brackets and paranthesis. 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 services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and 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).” See TMEP §1904.02(c)(ii). Therefore, Applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the goods and services.

 

If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:

 

International Class 9: Electric, electronic and optical measuring, signalling and checking apparatus and instruments, namely electric electroacoustics apparatus and instruments, in particular, {specify apparatus and instruments, i.e. electric apparatus for wireless transmission of acoustic information} and structural parts and fittings thereof; apparatus and instruments for recording, transmission and reproduction of audio signals, namely, {specify apparatus and instruments, i.e. audio transmitter units} and structural parts and fittings thereof; apparatus for recording and reproduction of electric signals, in particular audio signals, namely, {specify apparatus, i.e. sound recording and sound reproducing apparatus}; apparatus for the remote transmission of acoustic information; apparatus for transmission, broadcasting and reception of audio or video signals, in particular high- frequency sound transmitting apparatus and apparatus featuring sound transmission technology; pocket transmitters and receivers, in particular pocket transmitters and receivers in the UHF and VHF range, and structural parts and fittings thereof; diversity receivers for {indicate type, i.e. telephone, audio, video}; small earphones; antennas; narrow-band system and broadband system apparatus for use in sound transmission technology; transmitters, in particular multi-channel {specify type of transmitters, i.e. radio} transmitters, single-channel {specify type of transmitters, i.e. radio}  transmitters, HF {specify type of transmitters, i.e. radio}  transmitters; receivers, in particular multi-channel, single-channel and dual-channel {specify type of receiver, i.e. audio}  receivers, HF {specify type of receiver, i.e. audio}  receivers, headset {specify type of receiver, i.e. audio}  receivers, stethoset {specify type of receiver, i.e. audio}  receivers, and structural parts and fittings thereof; apparatus for sound transmission and reproduction apparatus in the nature of {specify, i.e. electric audio playback units}; head-set systems for {specify, i.e. mobile telephones}; conference systems consisting of microphone units, loudspeakers, monitors and telephones; devices for the analogue and digital transmission of audio and video and data signals; software for the control, tuning and checking of the aforesaid systems; data carriers equipped with {indicate subject matter} programs; software, recorded on CD-ROMs, DVDs, hard discs, and on volatile and non-volatile memories for {specify the function of the software, i.e. word processing, and the field of use}; conference and telecommunications technology apparatus and instruments, namely, {specify, i.e. telecommunication wiring}; microphones, in particular dynamic microphones, condenser microphones, electret microphones, headset microphones, gooseneck microphones, shotgun microphones, wireless microphones, clip-on microphones, microphones with integrated transmitters, condenser microphones, microphone modules, pressure microphones, switchable microphones, microphone capsules, and structural parts and fittings for the aforesaid goods; microphone isolating distributors; apparatus for transmitting sound, data or images, namely, {specify apparatus}; microphone cases; electroacoustic transducers, in particular headphones, dynamic headphones, electrostatic headphones, wireless headphones, headphones for use in vehicles and aeroplanes, in particular with high- frequency transmission, headphones with active noise cancellation, loudspeakers including wireless loudspeakers; parts and accessories for electroacoustic transducers and headphones, namely ear pads, volume controls, amplifiers, battery plugs, plug-in chargers, handset cords; electro-acoustic and visual identifiable guide systems, including multi-lingual guide systems, consisting of transmitters and receivers, in particular sound signal receivers and headphones; software for controlling sound recording and reproduction apparatus; software for recording and reproduction of audio signals”

 

International Class 15: “Electric and electronic musical instruments”

 

International Class 25: “Clothing, namely, footwear, baseball caps”

 

International Class 28: “Playthings, namely, board games; gymnastic and sporting appliances, not included in other classes”

 

International Class 32: “Beers; mineral water; aerated water; non-alcoholic fruit juice beverages; fruit drinks; fruit juices; syrups for making beverages; preparations for making fruit-based beverages”

 

International Class 35: “Promoting the goods of others through a display of goods; outdoor advertising; banner advertising; counselling in the field of business matters; business management consulting; advertising, marketing and promotional services and consultancy, advisory and assistance services related thereto; consulting services in the field of internet marketing; digital advertising services; retail store services in relation to audiovisual equipment and apparatus; retail store services of electronic appliances, headphones, microphones; development and implementation of marketing strategies for others; development of business marketing concepts; development of sales promotion campaigns for business; assistance services for the management of retail companies; business administration assistance; business management consultancy and administrative services; dissemination of printed advertising material, for others; dissemination of advertising for others via the internet; retail sales promotion; promotion services for the goods and services of others; distribution of advertising, marketing and promotional material; organization and conducting of product presentations; advertising and sales promotion services”

 

International Class 38: “Audio communications services, namely, transmission of audio by telecommunications networks, wireless communication networks, and internet; audio teleconferencing; audiovisual communication services, namely, {specify, i.e. transmitting audiovisual recordings via the internet}; consultancy services in the field of data communications; providing access to databases on computer networks and the internet; computerized {specify type of communication services, i.e. telephony} communication services; electronic data broadcasting services; wireless electronic transmission of images; wireless electronic transmission of {indicate, i.e. data, graphics}; wireless electronic transmission of audio signals; network conferencing services; providing electronic communications and telecommunications; transmission of information, data, advertisements, musical compositions, films, radio broadcasts, television programs via wireless or cable networks, in particular in the form of online internet services; providing video communication services; videoconferencing services”

 

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.

 

MARK DESCRIPTION REQUIREMENT

 

Applicant must submit a description of the mark, because one was not included in the application.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  In this case, the drawing of the mark is not in standard characters.

 

The following description is suggested, if accurate:  The mark consists of the stylized wording “BEYERDYNAMIC” with a y-shaped design centered above it.

 

Response guidelines.  For this application to proceed, 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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. 

 

 

 

 

Mischler, Megan

/Megan Mischler/

Trademark Examining Attorney

Law Office 127

(571) 272-9997

megan.mischler@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.