Offc Action Outgoing

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:

PARTIAL TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
IDENTIFICATION OF GOODS AND SERVICES

PARTIAL TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

Registration of the applied-for mark is refused in part because of a likelihood of confusion with the registered marks in U.S. Registration Nos. 3134597; 3887087; and 4443507. 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 is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

The goods and services at issue for this refusal appear in bold below.

Applicant’s mark MI is for:

“Notebook computers; pedometers; apparatus to check franking; cash registers; mechanisms for coin-operated apparatus; dictating machines; holograms; hemline markers; voting machines; lottery machines; face recognition equipment; photocopying machines; bathroom scales; dressmakers' measures; flashing lights [luminous signals]; smartphones; dashboard camera; cameras [photography]; measuring instruments; air analysis apparatus; speed checking apparatus for vehicles; connected bracelets [measuring instruments]; audiovisual teaching apparatus; inductors [electricity]; simulators for the steering and control of vehicles; mirrors [optics]; materials for electricity mains [wires, cables]; wafers for integrated circuits; chips [integrated circuits]; rheostats; electrical adapters; video screens; electronic key fobs being remote control apparatus; optical fibers [fibres] [light conducting filaments]; electric installations for the remote control of industrial operations; 3D spectacles; mobile power (rechargeable battery); transparencies [photography]; lightning conductors [rods]; ionization apparatus not for the treatment of air or water; fire extinguishing apparatus; radiology screens for industrial purposes; respirators for filtering air; alarms; portable remote control car stop; mobile software applications, downloadable; humanoid robots with artificial intelligence; tablet computers; interactive touch screen terminals; smart watches (data processing); smart glasses (data processing); computer peripheral devices; protective films adapted for smartphones; egg-candlers; dog whistles; decorative magnets; electrified fences; cases for smartphones; wearable activity trackers; virtual reality headsets; camcorders; electronic collars to train animals; sports whistle; headphones; cabinets for loudspeakers; biochips; sockets, plugs and other contacts [electric connections]; protective masks; wearable computer; computer software platform, recorded or downloadable; earphones; remote control apparatus; amplifiers; electronically encoded identity wristbands; thin client computers; electronic pocket translators; computer screen saver software, recorded or downloadable; downloadable graphics for mobile phones; personal digital assistants [PDAs]; telecommunication apparatus in the form of jewellery; selfie sticks for cellphones; satellite finder meters; television apparatus; selfie lenses; teaching robots; electric wire harnesses for automobiles; anti-dazzle shades; batteries, electric; security surveillance robots; encoded identification bracelets, magnetic; wireless router; flash-bulbs [photography]; selfie sticks [hand-held monopods]; LCD projectors; video projectors; on-board tape players; portable media players; sensors; switches, electric; radios; charging device for motor vehicles; wrist-worn smart phone; car phone brackets; GPS receiver; computer keyboards; wireless mouse for computer; sunglasses; biologic fingerprint lock; rechargeable battery; chargers for electric batteries” in Class 9;

“Lamps; lights for vehicles; germicidal lamps for purifying air; curling lamps; acetylene flares; cooking apparatus and installations; lava rocks for use in barbecue grills; refrigerators; air purifying apparatus and machines; hair driers [dryers]; water heaters; stage fog machine; heating installations; watering installations, automatic; solar heaters for baths; filters for drinking water; radiators, electric; lighters; polymerisation installations; air cleaner; household air cleaner; portable electric fans; fans [air-conditioning]; household electric fans; LED lamps; air conditioners; air filters for air conditioning; portable headlight; household electric water purifier; water filtering apparatus; reading lamps; desk lamps; electric cooker; coffee percolators, electric; kettles, electric; household faucet filters; water purifying apparatus; household humidifier; coffee machines, electric; multicookers; ceiling lights; bathroom warmers; household electric kettle; bread toasters; microwave ovens [cooking apparatus]” in Class 11; and

“Presentation of goods on communication media, for retail purposes; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services; personnel management consultancy; relocation services for businesses; compilation of information into computer databases; accounting; rental of vending machines; sponsorship search; rental of sales stands; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; promoting goods and services via sports events sponsorship; displaying goods and services via electronic means for teleshopping and online shopping; provision of space on websites for advertising goods and services; promoting serial movies for others; conducting market research by using computer data base; negotiation and conclusion of commercial transactions for third parties; providing business information services via internet; market information services; arranging and organizing market promotions for others; automobiles auctioneering; targeted marketing; marketing in the framework of software publishing; import-export agency services” in Class 35.

Registered mark MI (3134597) is for:

“Business consultation; market research; import and export agencies” in Class 35;

“packaging articles for transportation; freight brokerage; freight forwarding, freight transportation by ship, truck, train and air; warehouse storage; rental of warehouse space” in Class 39; and

“Architectural design” in Class 42:

Registered mark MI (3887087) is for:

“Electronic sensors for sensing physical exercise data during exercise, namely, acceleration, speed, distance, calories burned, stride rate and number of steps; electronic portable devices, namely, data recorders for storing, transferring and synchronizing physical exercise data and storing, transferring, synchronizing and viewing training instructions during exercise; electronic portable devices, namely, data recorders for providing audible training instructions during exercise” in Class 9; and

“Footwear” in Class 25.

Registered mark MI (4443507) is for:

“Filters for drinking water” in Class 11.

SIMILARITY OF THE MARKS

Applicant’s mark and registrant’s marks are confusingly similar because the literal element of applicant’s mark is identical to the literal element of the cited registered 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

Registration No. 3134597 is presented in stylized letters and Registration No. 3887087 is presented in stylized letters inside a tear-shaped outline. Applicant’s mark is similarly presented in stylized characters. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). The literal element of these marks is identical and may be a source of confusion for consumers of these goods and services.

As to Registration No. 4443507, 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 word portion 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”). Thus, registrant’s mark could be displayed in the same manner as the applicant’s mark.

The literal element of the applicant’s and the registered marks is identical, and the stylized lettering and/or design elements in the marks do not obviate this similarity in commercial impression formed by the shared lettering. Accordingly, applicant’s and the registered marks are confusingly similar in their entireties when giving each feature of the marks their appropriate weight.

SIMILARITY OF THE GOODS AND SERVICES

The compared goods and services 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 and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] 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).

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic 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)).

Comparison with registered mark MI (3134597)

Applicant’s services at issue are as follows: “import-export agency services.”

Registrant’s services at issue are as follows: “import and export agencies.”

In this case, the registration uses broad wording to describe “import and export agencies” which presumably encompasses all services of the type described, including applicant’s more narrow “import-export agency services,” applicant’s services presumably rendered by import and export agencies such as the registrant’s. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

Comparison with registered mark MI (3887087)

Applicant’s goods at issue are as follows: “pedometers; wearable activity trackers.”

Registrant’s goods at issue are as follows: “electronic sensors for sensing physical exercise data during exercise, namely, acceleration, speed, distance, calories burned, stride rate and number of steps; electronic portable devices, namely, data recorders for storing, transferring and synchronizing physical exercise data and storing, transferring, synchronizing and viewing training instructions during exercise; electronic portable devices, namely, data recorders for providing audible training instructions during exercise.”

In this case, the application uses broad wording to describe “pedometers; wearable activity trackers” which presumably encompasses all goods of the type described, including regsitrant’s more narrow “electronic sensors for sensing physical exercise data during exercise, namely, acceleration, speed, distance, calories burned, stride rate and number of steps; electronic portable devices, namely, data recorders for storing, transferring and synchronizing physical exercise data and storing, transferring, synchronizing and viewing training instructions during exercise; electronic portable devices, namely, data recorders for providing audible training instructions during exercise,” applicant’s pedometers and activity trackers being used for accumulating exercise data and being broad enough in scope to encompass the features identified in the registrant’s goods. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

Comparison with registered mark MI (4443507)

Applicant’s goods at issue are as follows: “filters for drinking water; water filtering apparatus; household faucet filters.”

Registrant’s goods at issue are as follows: “filters for drinking water.”

As to “filters for drinking water,” the goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, these goods of the applicant and registrant are related.

As to the applicant’s remaining goods at issue, registrant’s “filters for drinking water” presumably encompasses all goods of the type described, including applicant’s more narrow “water filtering apparatus; household faucet filters.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, these goods of the applicant and registrant are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

Additionally, the goods and services 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)). Thus, applicant’s and registrant’s goods and services as cited above are related.

Because the applied-for mark so resembles registered marks that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the identical and/or related goods and services of the applicant and registrants, registration of the applied-for mark must be refused in part under Section 2(d) of the Trademark 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 requirement set forth below.

IDENTIFICATION OF GOODS AND SERVICES

As detailed below in the bulleted items, certain wording in the identification of goods and services for International Classes 9, 11, and 35 is indefinite and/or too broad which must be clarified because it does not make clear the nature of the goods and/or service and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

Further, the identification of goods and services contains parentheses and brackets. 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 and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from those assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Classes 9, 11, and 35, the classes specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

A summary of the problematic wording in the identification of goods is included below for applicant’s convenience. Suggested language appears in bold.

Class 9

“hologram;” – This entry is overbroad because it is not clear that the applicant is offering a good properly classified in Class 9, the class set forth in the application. Applicant may adopt the following Class 9 identification, if accurate: “hologram apparatus;”
“hemline markers;” – This entry is overbroad because it is not clear that the applicant is offering a good properly classified in Class 9, the class set forth in the application. Applicant may adopt the following Class 9 identification, if accurate: “hemline markers in the nature of a measuring device for marking hems;”
“lottery machines;” – This entry is overbroad because it is not clear that the applicant is offering a good properly classified in Class 9, the class set forth in the application, and is indefinite because the nature of the machine has not been provided. Applicant may adopt the following Class 9 identification, if accurate: “video lottery ticket dispensing terminals;”
“dressmakers' measures;” – This entry is indefinite as to the nature of the “measures.” Applicant may adopt the following Class 9 identification, if accurate: “dressmakers' measuring tapes;”
“flashing lights [luminous signals]; - This entry includes brackets, and is indefinite because the purpose of the flashing lights has not been identified. Applicant may adopt the following Class 9 identification, if accurate: “luminous {specify use, e.g., safety, railway, traffic} signals in the nature of flashing lights;”
“cameras [photography];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “photography cameras;”
“measuring instruments;” – This entry is indefinite because what is being measured has not been identified. Applicant may adopt the following Class 9 identification, if accurate: “instruments for measuring {specify what is being measured, e.g., length, gravity, tools, etc.};”
“speed checking apparatus for vehicles;” – This entry is indefinite because the nature of the apparatus is not clear. Applicant may adopt the following Class 9 identification, if accurate: “speed checking apparatus for vehicles in the nature of {specify nature of the apparatus, e.g., speedometer, radar guns for police work, etc.};
“connected bracelets [measuring instruments];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “connected measuring bracelets;”
“audiovisual teaching apparatus;” – This entry is overbroad because it is not clear that the applicant is offering a good properly classified in Class 9, the class set forth in the application, and is indefinite because the nature of the apparatus has not been provided. Applicant may adopt the following Class 9 identification, if accurate: audiovisual teaching apparatus in the nature of portable handheld electronic digital video messengers for recording, storage, transmission or reproduction of audiovisual content;”
“inductors [electricity]” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “electrical inductors;”
“mirrors [optics];” – This entry includes brackets, and the nature of the mirrors has not been identified. Applicant may adopt the following Class 9 identification, if accurate: scientific and technical apparatus, namely, optical mirrors;”
“materials for electricity mains [wires, cables];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “materials for electricity mains, namely, electric wires and cables;”
“chips [integrated circuits];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “chips for integrated circuits;”
“optical fibers [fibres][light conducting filaments];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “optical fibers in the nature of light conducting filaments;”
“mobile power (rechargeable battery);” – This entry includes parentheses. Applicant may adopt the following Class 9 identification, if accurate: “mobile power in the nature of a rechargeable battery;”
“transparencies [photography];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “photographic transparencies;”
“lightning conductors [rods];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “lightning conductors in the nature of rods;”
“ionization apparatus not for the treatment of air or water;” – This entry is too broad and could identify goods in other classes. Applicant may adopt the following Class 9 identification, if accurate: “ionization apparatus not for the treatment of air or water for scientific or laboratory use;”
“radiology screens for industrial purposes;” – This entry is indefinite as to the nature of the screens. Applicant may adopt the following Class 9 identification, if accurate: “radiology screens in the nature of display monitors for industrial purposes;”
“alarms;” – This entry is indefinite as to the nature of the alarms and is too broad as it could identify goods in other classes. Applicant may adopt the following Class 9 identification, if accurate: “{specify the type of Class 9 alarm, e.g., fire, smoke, sound, etc.} alarms;”
“portable remote control car stop” – This entry does not make clear the nature of the goods. Applicant may adopt the following Class 9 identification, if accurate: “portable remote control car stopping device;”
“mobile software applications, downloadable;” – This entry is indefinite as to the purpose of the software. Applicant may adopt the following Class 9 identification, if accurate: “downloadable mobile software applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use};”
“smart watches (data processing);” – This entry includes parentheses. Applicant may adopt the following Class 9 identification, if accurate: “smart watches for data processing;”
“smart glasses (data processing);” – This entry includes parentheses. Applicant may adopt the following Class 9 identification, if accurate: “smart glasses for data processing;”
“biochips;” – This entry is indefinite as to the purpose of the biochips. Applicant may adopt the following Class 9 identification, if accurate: “bio-chips for research or scientific purposes;”
“sockets, plugs and other contacts [electric connections];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “electric connections in the nature of sockets, plugs and other contacts;”
“wearable computers;” – This entry is overbroad because it is not clear that the applicant is offering a good properly classified in Class 9. Applicant may adopt the following Class 9 identification, if accurate: “wearable computers in the nature of smartwatches;”
“computer software platform, recorded or downloadable;” – This entry is indefinite as to the purpose of the platforms. Applicant may adopt the following Class 9 identification, if accurate: “computer software platform, recorded or downloadable, for {indicate purpose of platforms, e.g., application development, web hosting, database management, etc.};”
“remote control apparatus;” – This entry is indefinite as to the purpose of the controls. Applicant may adopt the following Class 9 identification, if accurate: “remote control apparatus for {indicate specific devices, e.g. radios, televisions, stereos};”
“personal digital assistants [PDA];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “personal digital assistants;”
“telecommunication apparatus in the form of jewellery;” – This entry is indefinite as to the nature of the apparatus. Applicant may adopt the following Class 9 identification, if accurate: “telecommunication apparatus in the nature of wireless receivers in the form of jewelry;”
“television apparatus;” - This entry is indefinite as to the nature of the apparatus. Applicant may adopt the following Class 9 identification, if accurate: “television apparatus for projection purposes;”
“selfie lenses;” – This entry is indefinite as to the nature of the lenses. Applicant may adopt the following Class 9 identification, if accurate: “selfie lenses for cameras;”
“anti-dazzle shades;” – This entry is indefinite as to the nature of the shades. Applicant may adopt the following Class 9 identification, if accurate: “anti-dazzle shades in the nature of optical filters for screens;”
“flash-bulbs [photography];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “flash-bulbs used for photography;”
“selfie sticks {hand-held monopods];” – This entry includes brackets. Applicant may adopt the following Class 9 identification, if accurate: “selfie sticks in the nature of hand-held monopods;”
“sensors;” – This entry is indefinite as to the nature of the sensors. Applicant may adopt the following Class 9 identification, if accurate: “{specify type of Class 9 sensor, e.g., pressure, optical, touchscreen, etc.} sensors;”
“charging device for motor vehicles;” – This entry is indefinite as to the nature of the device. Applicant may adopt the following identification, if accurate: “battery charging device for motor vehicles specially adapted for use with handheld digital electronic devices, namely, {indicate specific device, e.g., cell phones, MP3 players, personal digital assistants, etc.};
“biologic fingerprint lock;” – This entry is does not make clear the nature of the lock. Applicant may adopt the following identification, if accurate: “biometric fingerprint lock”

Class 11

“curling lamps;” – This entry appears to contain a typographical error as to “curling.” Applicant may adopt the following identification, if accurate: “curing lamps;”
“acetylene flares;” – This entry is indefinite as to the purpose of the flares. Applicant may adopt the following Class 11 identification, if accurate: “acetylene flares for lighting;”
“cooking apparatus and installations;” – This entry is indefinite as to the nature of the apparatus. Applicant may adopt the following Class 11 identification, if accurate: “apparatus and installations for cooking, namely, {specify type of apparatus, e.g., microwave oven, cooktops, ovens, etc.};
“hair driers [dryers];” – This entry includes brackets. Applicant may adopt the following Class 11 identification, if accurate: “hair driers;”
“watering installations, automatic;” – This entry is indefinite as to the nature of the watering installations. Applicant may adopt the following Class 11 identification, if accurate: “water{specify nature of installation, e.g., heating, cooling, purification, etc.} installations, automatic;”
“lighters;” – This entry is indefinite as to the nature of the lighters. Applicant may adopt the following Class 11 identification, if accurate: “utility lighters for lighting grills, fireplaces and candles;”
“polymerisation installations;” – This entry is indefinite as to the nature of the polymerisation installations. Applicant may adopt the following Class 11 identification, if accurate: “heated polymerization units for dental restoration compounds;”
“air cleaner;” – This entry is indefinite as to the nature of the air cleaner. Applicant may adopt the following Class 11 identification, if accurate: “air cleaners for household use;”
“fans [air conditioning];” – This entry includes brackets. Applicant may adopt the following Class 11 identification, if accurate: “electric fans for air conditioning;”
“portable headlight;” – This entry is indefinite as to the nature of the headlight. Applicant may adopt the following Class 11 identification, if accurate: “portable vehicle headlight;”
“electric cooker;” – This entry is indefinite as to the nature of the cooker. Applicant may adopt the following Class 11 identification, if accurate: “electric {specify type of cooker, e.g., rice, pressure, slow} cooker;”
“bread toaster;” – This entry is overbroad as it could include non-electric toasters in Class 21. Applicant may adopt the following Class 11 identification, if accurate: “electric bread toasters;”
“microwave ovens [cooking apparatus];” – This entry includes brackets. Applicant may adopt the following Class 11 identification, if accurate: “microwave ovens;”

Class 35

“Presentation of goods on communication media, for retail purposes;” – This entry has specifically been deleted from the ID manual. Applicant may delete the entry or adopt the following Class 35 identification, if accurate: “providing home shopping services in the field of {indicate field or type of goods} by means of {specify, e.g., television, mobile telephone, etc.};”
“accounting;” – This entry is indefinite as to the nature of the service being performed. Applicant may adopt the following Class 35 identification, if accurate: “accounting services;”
“retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies;” – This entry is indefinite as to the nature of retail services. Applicant may adopt the following Class 35 identification, if accurate: “retail store services for pharmaceutical, veterinary and sanitary preparations and medical supplies;”
“wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies;” – This entry is indefinite as to the nature of wholesale services. Applicant may adopt the following Class 35 identification, if accurate: “wholesale store services for pharmaceutical, veterinary and sanitary preparations and medical supplies;”
“targeted marketing;” – This entry does not indicate that it is a service performed by others. Applicant may adopt the following Class 35 identification, if accurate: “targeted marketing services;”

For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identifications of goods and services that complies with the above-mentioned clarification requirements, with any material changes highlighted in bold, and items requiring further clarification in bold italics.

Applicant may adopt the following identifications, if accurate:

Class 9

Notebook computers; pedometers; apparatus to check franking; cash registers; mechanisms for coin-operated apparatus; dictating machines; hologram apparatus; hemline markers in the nature of a measuring device for marking hems; voting machines; video lottery ticket dispensing terminals; face recognition equipment; photocopying machines; bathroom scales; dressmakers' measuring tapes; luminous {specify use, e.g., safety, railway, traffic} signals in the nature of flashing lights; smartphones; dashboard camera; photography cameras; instruments for measuring {specify what is being measured, e.g., length, gravity, tools, etc.}; air analysis apparatus; speed checking apparatus for vehicles in the nature of {specify nature of the apparatus, e.g., speedometer, radar guns for police work, etc.}; connected measuring bracelets; audiovisual teaching apparatus in the nature of portable handheld electronic digital video messengers for recording, storage, transmission or reproduction of audiovisual content; electrical inductors; simulators for the steering and control of vehicles; scientific and technical apparatus, namely, optical mirrors; materials for electricity mains, namely, electric wires and cables; wafers for integrated circuits; chips for integrated circuits; rheostats; electrical adapters; video screens; electronic key fobs being remote control apparatus; optical fibers in the nature of light conducting filaments; electric installations for the remote control of industrial operations; 3D spectacles; mobile power in the nature of a rechargeable battery; photographic transparencies; lightning conductors in the nature of rods; ionization apparatus not for the treatment of air or water for scientific or laboratory use; fire extinguishing apparatus; radiology screens in the nature of display monitors for industrial purposes; respirators for filtering air; {specify the type of Class 9 alarm, e.g., fire, smoke, sound, etc.} alarms; portable remote control car stopping device; downloadable mobile software applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; humanoid robots with artificial intelligence; tablet computers; interactive touch screen terminals; smart watches for data processing; smart glasses for data processing; computer peripheral devices; protective films adapted for smartphones; egg-candlers; dog whistles; decorative magnets; electrified fences; cases for smartphones; wearable activity trackers; virtual reality headsets; camcorders; electronic collars to train animals; sports whistle; headphones; cabinets for loudspeakers; bio-chips for research or scientific purposes; electric connections in the nature of sockets, plugs and other contacts; protective masks; wearable computers in the nature of smartwatches; computer software platform, recorded or downloadable, for {indicate purpose of platforms, e.g., application development, web hosting, database management, etc.}; earphones; remote control apparatus for {indicate specific devices, e.g. radios, televisions, stereos}; amplifiers; electronically encoded identity wristbands; thin client computers; electronic pocket translators; computer screen saver software, recorded or downloadable; downloadable graphics for mobile phones; personal digital assistants; telecommunication apparatus in the nature of wireless receivers in the form of jewelry; selfie sticks for cellphones; satellite finder meters; television apparatus for projection purposes; selfie lenses for cameras; teaching robots; electric wire harnesses for automobiles; anti-dazzle shades in the nature of optical filters for screens; batteries, electric; security surveillance robots; encoded identification bracelets, magnetic; wireless router; flash-bulbs used for photography; selfie sticks in the nature of hand-held monopods; LCD projectors; video projectors; on-board tape players; portable media players; {specify type of Class 9 sensor, e.g., pressure, optical, touchscreen, etc.} sensors; switches, electric; radios; battery charging device for motor vehicles specially adapted for use with handheld digital electronic devices, namely, {indicate specific device, e.g., cell phones, MP3 players, personal digital assistants, etc.}; wrist-worn smart phone; car phone brackets; GPS receiver; computer keyboards; wireless mouse for computer; sunglasses; biometric fingerprint lock”; rechargeable battery; chargers for electric batteries.

Class 11

Lamps; lights for vehicles; germicidal lamps for purifying air; curing lamps; acetylene flares for lighting; apparatus and installations for cooking, namely, {specify type of apparatus, e.g., microwave oven, cooktops, ovens, etc.}; lava rocks for use in barbecue grills; refrigerators; air purifying apparatus and machines; hair driers; water heaters; stage fog machine; heating installations; water {specify nature of installation, e.g., heating, cooling, purification, etc.} installations, automatic; solar heaters for baths; filters for drinking water; radiators, electric; utility lighters for lighting grills, fireplaces and candles; heated polymerization units for dental restoration compounds; air cleaners for household use; household air cleaner; portable electric fans; electric fans for air conditioning; household electric fans; LED lamps; air conditioners; air filters for air conditioning; portable vehicle headlight; household electric water purifier; water filtering apparatus; reading lamps; desk lamps; electric {specify type of cooker, e.g., rice, pressure, slow} cooker; coffee percolators, electric; kettles, electric; household faucet filters; water purifying apparatus; household humidifier; coffee machines, electric; multicookers; ceiling lights; bathroom warmers; household electric kettle; electric bread toasters; microwave ovens.

Class 35

providing home shopping services in the field of {indicate field or type of goods} by means of {specify, e.g., television, mobile telephone, etc.}; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services; personnel management consultancy; relocation services for businesses; compilation of information into computer databases; accounting services; rental of vending machines; sponsorship search; rental of sales stands; retail store services for pharmaceutical, veterinary and sanitary preparations and medical supplies; wholesale store services for pharmaceutical, veterinary and sanitary preparations and medical supplies; promoting goods and services via sports events sponsorship; displaying goods and services via electronic means for teleshopping and online shopping; provision of space on websites for advertising goods and services; promoting serial movies for others; conducting market research by using computer data base; negotiation and conclusion of commercial transactions for third parties; providing business information services via internet; market information services; arranging and organizing market promotions for others; automobiles auctioneering; targeted marketing services; marketing in the framework of software publishing; import-export agency services.

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

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 requirements 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.

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.

U.S. TRADEMARK COUNSEL SUGGESTED

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys 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/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

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.

/Cheryl D. Kluwe/

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@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.

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