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. 79262102
Mark: XIAOMI
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Correspondence Address: |
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Applicant: XIAOMI INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1474970
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods in the application: buildings of metal; railway material of metal; cable joints of metal, non-electric; crampons [climbing irons]; bells; keys of metal; trays of metal; containers of metal [storage, transport]; bells for animals; monuments of metal; anti-friction metal; cramps of metal [crampons]; memorial plaques of metal; cattle chains; identification bracelets of metal, used in hospitals; tombstone plaques of metal; dental apparatus, electric; contraceptives, non-chemical; orthopaedic articles; medical apparatus and instruments; dental apparatus; galvanic therapeutic appliances; surgical implants comprised of artificial materials. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
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).
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The identification of goods is indefinite and must be clarified because the wording in Class 006, “buildings of metal”, “railway material of metal”, “cable joints of metal, non-electric”, “bells”, “keys of metal”, “trays of metal”, and “bells for animals”, must be clarified as to the specific type of goods being offered and the wording, “monuments of metal”, “anti-friction metal”, “memorial plaques of metal”, “cattle chains”, and “tombstone plaques of metal” must be clarified that these are goods of metal or common metal.
Further, the wording in Class 010, “dental apparatus, electric”, “orthopaedic articles”, “medical apparatus and instruments”, “dental apparatus”, and “galvanic therapeutic appliances” must be clarified as to the specific type of apparatus and instruments being offered, such as “Milling apparatus for dental purposes”, “Orthopedic supports” and “Radiation dosimeters for assessing therapeutic doses of radiation delivered to patients”. Additionally, the wording “contraceptives, non-chemical” must be clarified as being a type of apparatus as contraceptives are goods in Class 005 and goods cannot be moved into different classes in a Section 66(a) application. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Additionally, Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 010 for “surgical implants comprised of artificial materials.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Further, the identification of goods contains 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 that have been deleted from registrations or in an affidavit of incontestability to indicate goods 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 brackets from the identification and incorporate any bracketed information into the description of the goods.
Applicant may adopt the following identification, if accurate:
Class 006: metals in foil or powder form for 3D printers; tubes of metal; Transportable buildings of metal;
railway material of metal for railway construction; wrapping or binding bands of metal; cable joints of metal, non-electric, namely, structural joint connectors of metal; crampons [climbing irons]; clothes hooks of metal; metal bells; keys of metal for locks; safes, electronic; trays of metal, namely, {specify type of
trays by common commercial name in International Class 006, e.g. Metal cable trays used in building construction, Metal packaging trays, Tool and tool accessory trays made of metal sold empty and
parts and fittings therefor}; containers of metal for storage and transport of goods [storage, transport]; numberplates
of metal; Pet collar accessories, namely, metal bells for animals; traps for wild animals; works of art of common metal; ores of metal; monuments of
non-precious metal; rods of metal for welding; mooring buoys of metal; identification bracelets of metal; wind vanes of metal; tree protectors of metal;
anti-friction common metals, unwrought or semi-wrought; steel wire; cramps of metal [crampons]; safes; machine belt fasteners of
metal; boxes of common metal; memorial plaques of common metal; cattle metal chains; soldering wire of metal;
metal identification bracelets of metal, used in hospitals; tombstone plaques of common metal.
Class 010: Sphygmomanometers; dental apparatus, electric namely, {Specify type of apparatus by common commercial name in International Class 010, e.g. Milling apparatus for dental purposes, X-ray apparatus for dental imaging, Drills for dental use}; electric acupuncture instruments; respirators for artificial respiration; teething rings; breast pumps; contraceptives apparatus, non-chemical; surgical implants comprised of artificial materials; orthopaedic articles namely, {Specify type of goods by common commercial name in International Class 010, e.g. Surgical and medical apparatus and instruments for use in orthopedic surgery, Orthopaedic knee bandages, Orthopedic supports}; suture materials; medical apparatus and instruments for use in {specify nature of medical procedures, e.g., endovascular, cardiovascular, endoscopy, etc.} procedures; dental apparatus namely, {Specify type of apparatus by common commercial name in International Class 010, e.g. Milling apparatus for dental purposes, Dental caps, Drills for dental use}; galvanic therapeutic appliances, namely, {Specify type of goods by common commercial name in International Class 010, e.g. Carbon arc lamp units for therapeutic purposes, Exercise machines for therapeutic purposes, Radiation dosimeters for assessing therapeutic doses of radiation delivered to patients}; containers especially made for medical waste; babies' bottles
The scope of the goods 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 will further limit scope, and once goods 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 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 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.
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods in International Classes 006 and 010 identified above, in the beginning of this Office action, will be deleted from the application.
In such case, the application will then proceed only with the following goods in International Classes 006 and 010: metals in foil or powder form for 3D printers; tubes of metal; wrapping or binding bands of metal; clothes hooks of metal; safes, electronic; numberplates of metal; traps for wild animals; works of art of common metal; ores of metal; rods of metal for welding; mooring buoys of metal; identification bracelets of metal; wind vanes of metal; tree protectors of metal; steel wire; safes; machine belt fasteners of metal; boxes of common metal; soldering wire of metal; Sphygmomanometers; electric acupuncture instruments; respirators for artificial respiration; teething rings; breast pumps; implants comprised of artificial materials; suture materials; containers especially made for medical waste; babies' bottles. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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.
How to respond. Click to file a response to this nonfinal Office action
If the Applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned Examining Attorney.
/Jennifer O'Brien/
Examining Attorney
Law Office 120
(571)272-4579
Jennifer.O'Brien@uspto.gov
RESPONSE GUIDANCE