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. 79263395
Mark: TCL
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Correspondence Address: |
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Applicant: TCL CORPORATION
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1478084
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:
CLASS 07 – “Food preparation machines, electromechanical; ironing machines; kitchen machines, electric; blenders, electric, for household purposes; household bean milk maker; washing machines [laundry]; machines and apparatus for cleaning, electric;”
CLASS 09 – “Computer programs [downloadable software]; monitors [computer hardware]; USB flash drives; downloadable mobile phone applications; mouse [computer peripheral]; face recognition equipment; apparatus for checking hand lines [fingerprint scanners]; navigational instruments; network communication equipment; television apparatus; monitoring apparatus, other than for medical purposes; electronic advertising displays; learning machines; tachographs; audiovisual teaching apparatus; surveying apparatus and instruments; cameras [photography]; inductors [electricity]; materials for electricity mains [wires, cables]; chips [integrated circuits]; light-emitting diodes [LED]; plug, sockets and other contacts [electric connections]; regulated power supply apparatus; household remote controller; inverters [electricity]; theft prevention installations, electric; portable power source (rechargeable battery);” and
CLASS 11 – “Cooking utensils, electric; cooking apparatus and installations; grills [cooking appliances]; microwave ovens [cooking apparatus]; drying apparatus and installations; electrical driers; heating apparatus; toilets [water-closets]; heaters for baths; hand drying apparatus for washrooms; electric bath heaters; water dispensers; sterilized cupboard.”
See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial 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). However, applicant must respond to the requirement(s) set forth below.
REQUIREMENT – IDENTIFICATION OF GOODS; THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Changes are required to the identification of goods because certain goods are indefinite and needs to be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Required amendments and explanations thereof to the identification are provided below. The trademark examining attorney has also suggested small changes to the wording and punctuation to improve the clarity of the recitation.
International Class 07
The wording “food preparation machines, electromechanical” is indefinite and must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the type(s) of food preparation machines, e.g., tumblers for marinating food or the specific purpose of the goods, e.g., food chopping machines for commercial use.
The wording “ironing machines” must be clarified because it is too broad and could include goods in other international classes such as electric soldering irons in International Class 07 and fabric steamers in International Class 11. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Meanwhile, the international classification of goods and services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and services in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although ironing machines can be classified in international classes other than International Class 07, any modification to the identification must identify goods in International Class 07 only, the class specified in the application for such goods.
The wording “kitchen machines, electric” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the type(s) of kitchen machines, e.g., electric standing mixers.
The wording “blenders, electric, for household purposes” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the type(s) of blenders for household purposes, e.g., food blenders for household purposes.
The wording “household bean milk maker” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the exact nature of the goods, e.g., soybean milk makers.
The wording “machines and apparatus for cleaning” is indefinite and must be clarified. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “devices” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
International Class 09
The wording “computer programs” and “downloadable mobile phone applications” is indefinite and must be clarified by amending the identification to specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The wording “USB flash drives” must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify that the goods are either (1) “blank USB flash drives” or (2) the field of use in which the goods are used if they are not blank. See TMEP §1402.01.
The wording “face recognition equipment” and “network communication equipment” must be clarified because it is indefinite as it does not specify the name of each piece of equipment or the type of the equipment. See TMEP §§1402.01, 1402.03. Therefore, applicant must amend this wording to specify either (1) the common generic name of each piece of Class 09 equipment or (2) the nature and purpose or function of the equipment. See TMEP §§1402.01, 1402.03.
The wording “television apparatus, monitoring apparatus, other than for medical purposes, audiovisual teaching apparatus, surveying apparatus and instruments, regulated power supply apparatus” is indefinite and must be clarified. As previously noted, in the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). Therefore, applicant should amend the identification by inserting the word “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
The wording “navigational instruments” must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify either (1) the type of navigational instruments, e.g., GPS navigation device or (2) that the goods are electric or electronic navigational instruments.
The wording “electronic advertising displays” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further describe the product, its main purpose, and its intended uses. See id.
The wording “tachographs” is indefinite and needs to be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further describe the product, its main purpose, and its intended uses. See id.
The wording “plugs” must be clarified because it is too broad and could include goods in other international classes such as metal plugs in International Class 06, electric plugs in International Class 09 and ear plugs for swimming in International Class 10. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must amend this wording to specify the type of plugs in Class 09 only.
The wording “household remote controller” must be clarified because it does not identify the type of products being controlled with applicant’s remote controllers for household purposes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “theft prevention installations, electric” is indefinite and must be clarified to specify the type of theft prevention installations by the common commercial or generic names for the goods, e.g., theft alarms. See 37 C.F.R. §2.32(a)(6); 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.
International Class 11
The wording “cooking utensils, electric” must be clarified because it does not identify the type of electric cooking utensils. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the type of electric cooking utensils in Class 11, e.g., cooking ovens.
The wording “cooking apparatus and installations, drying apparatus and installations, and heating apparatus” is indefinite and must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant should amend the identification by inserting the word “namely,” and then list the specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
The wording “electrical driers” must be clarified because it does not identify the type of driers such as laundry driers. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “heaters for baths” and “electric bath heaters” must be clarified because it is too broad and could include goods in other international classes such as electric bath heaters in the nature of laboratory equipment in International Class 09 and bathroom heaters in International Class 11. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must amend this wording to specify the type of “heaters for baths” and “electric bath heaters” in Class 11 only.
The wording “hand drying apparatus for washrooms” must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify either (1) the type of hand drying apparatus for washrooms, e.g., hand dryers or (2) that the goods involve “electric hand drying apparatus for washrooms.”
The wording “water dispensers” and “sterilized cupboard” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further describe the product, its main purpose, and its intended uses. See id.
For assistance with identifying 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.
Applicant may adopt the following identification, if accurate [new language is shown in bold typeface]:
CLASS 09 - “Data processing apparatus; computers; computer programs being downloadable software for _____ [specify function] in the field of _____ [specify field, if applicable]; computer peripheral devices; monitors being computer hardware; tablet computers; blank USB flash drives; computer hardware; smartwatches; smartglasses; interactive touch screen terminals; humanoid robots with artificial intelligence; downloadable mobile phone applications for _____ [specify function] in the field of _____ [specify field, if applicable]; network cards; network servers; computer keyboards; computer mouse being computer peripheral device; electronic agendas; face recognition equipment consisting of _____ [specify, e.g., computer hardware and software therefor]; apparatus for checking hand lines being fingerprint scanners; photocopiers; facsimile machines; electronic notice boards; telephone apparatus; video telephones; cellular phones; electric navigational instruments; network communication equipment, namely, _____ [list specific Class 09 items, e.g., computer hardware]; network routers; intercoms; wearable activity trackers; television apparatus for projection purposes; cabinets for loudspeakers; horns for loudspeakers; megaphones; audio mixers; monitoring apparatus, other than for medical purposes, namely, _____ [list specific Class 09 items, e.g., alarm monitoring systems]; audio- and video-receivers; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; camcorders; portable media players; electronic book readers; electronic LCD advertisement display unit with multi-networking (TCP/IP) capabilities; learning machines, namely, _____ [list specific Class 09 items, e.g., computer hardware]; earphones; headphones; microphones; virtual reality headsets; tachographs in the nature of _____ [specify, e.g., electronic measuring device that displays a manual wheelchair user's propulsion activity, namely, number of pushes, distance traveled, speed, and cadence]; set-top boxes; security surveillance robots; wearable video display monitors; photographic cameras; video projectors; audiovisual teaching apparatus, namely, _____ [list specific Class 09 items, e.g., computer hardware]; surveying instruments; surveying apparatus, namely, _____ [list specific Class 09 items, e.g., magnetic compasses for surveying]; electricity meters; infrared detectors; electrical inductors for electricity; materials for electricity mains being wires and cables; chips being integrated circuits; light-emitting diodes (LED); switches, electric; electric plugs, sockets and other contacts being electric connections; regulated power supply apparatus namely, _____ [list specific Class 09 items, e.g., inverters for power supply]; video screens; fluorescent screens; household remote controllers for _____ [indicate specific devices, e.g. radios, televisions, stereos but excluding gaming apparatus]; power distribution boxes; power adapters; inverters for electricity; theft prevention installations, electric, namely, _____ [list specific Class 09 items, e.g., theft alarms]; electric door bells; locks, electric; electronic access control systems for interlocking doors; biometric fingerprint door locks; digital door locks; eyeglasses; batteries, electric; portable power source being rechargeable battery;” and
CLASS 11 – “Lamps; cooking utensils, namely, electric _____ [list specific Class 11 items, e.g., cooking ovens]; cooking apparatus and installations, namely, _____ [list specific Class 11 items, e.g., electric cooking pots and stoves for household purposes]; barbecue grills being cooking appliances; gas burners; pressure cookers, electric; coffee machines, electric; kettles, electric; microwave ovens being cooking apparatus; bread-making machines; coffee percolators, electric; coffee roasters; food steamers, electric; refrigerators; freezers; wine cellars, electric; air-conditioning installations; air-conditioning apparatus; air purifying apparatus and machines; drying apparatus and installations, namely, _____ [list specific Class 11 items, e.g., wet-cleaning drying machines]; extractor hoods for kitchens; dehumidifiers for household purposes; electric fans for personal use; laundry dryers, electric; fabric steamers; humidifier; electrical ____ [specify type, e.g., air and laundry] driers; heating apparatus, namely, _____ [list specific Class 11 items, e.g., stoves]; heating installations; bathroom heaters; electric hand drying apparatus for washrooms; electric bathroom heaters; toilets being water-closets; toilet seats; water dispensers in the nature of water fountains; water purifying apparatus and machines; sterilized cupboard in the nature of sterilizers not for medical purposes; radiators, electric.”
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 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:
CLASS 07 – “Juice extractors, electric; dishwashers; coffee grinders, other than hand-operated; dry-cleaning machines; motors, electric, for refrigerators; compressed air machines; compressors for refrigerators; door openers, electric; window openers, electric; vacuum cleaners; curtain drawing devices, electrically operated; electric openers for rolling doors; 3D printers; vending machines;”
CLASS 09 – “Data processing apparatus; computers; computer peripheral devices; tablet computers; computer hardware; smartwatches; smartglasses; interactive touch screen terminals; humanoid robots with artificial intelligence; network cards; network servers; computer keyboards; electronic agendas; photocopiers; facsimile machines; electronic notice boards; telephone apparatus; video telephones; cellular phones; network routers; intercoms; wearable activity trackers; cabinets for loudspeakers; horns for loudspeakers; megaphones; audio mixers; audio- and video-receivers; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; camcorders; portable media players; electronic book readers; earphones; headphones; microphones; virtual reality headsets; set-top boxes; security surveillance robots; wearable video display monitors; video projectors; electricity meter; infrared detectors; switches, electric; video screens; fluorescent screens; power distribution boxes; power adapters; electric door bells; locks, electric; electronic access control systems for interlocking doors; biometric fingerprint door locks; digital door locks; eyeglasses; batteries, electric;” and
CLASS 11 – “Lamps; gas burners; pressure cookers, electric; coffee machines, electric; kettles, electric; bread-making machines; coffee percolators, electric; coffee roasters; food steamers, electric; refrigerators; freezers; wine cellars, electric; air-conditioning installations; air-conditioning apparatus; air purifying apparatus and machines; extractor hoods for kitchens; dehumidifiers for household purposes; electric fans for personal use; laundry dryers, electric; fabric steamers; humidifier; heating installations; toilet seats; water purifying apparatus and machines; radiators, electric.”
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
/Miroslav Novakovic/
Trademark Examining Attorney
Law Office 108
(571) 272-2866
miroslav.novakovic@uspto.gov
RESPONSE GUIDANCE