Offc Action Outgoing

Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

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.

Search Results

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).

Identification of Goods and Services

Certain items in the identification are indefinite and must be clarified because the wording used is unclear as to the specific nature, purpose, and/or function of the goods and services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe the product or service, its main purpose, and its intended uses. See id.

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

Additional information and suggestions are given below in bold and brackets. Applicant may adopt the following identification, if accurate:

“Recorded computer operating programs; recorded computer software for [specify function, e.g., controlling cars, alerting drivers to dangers] safe car driving; downloadable computer software development tools; computer software for controlling the operation of automatic vehicle, recorded; downloadable computer operating system programs; electronic autonomous driving control apparatus for the steering and control of automotive vehicles; architecture systems comprised of [specify recorded or downloadable] software and hardware platforms for facilitating voice and data transmission and for operating communication systems, communication devices, communication hubs, and antenna; computer software for [specify function] for automotive open system architecture, recorded; computer software for [specify function] for automotive open system framework, recorded; computer software for [specify function] for automotive open system architecture solution, recorded; computer applications for automotive vehicles driving control, recorded; computer applications for automotive vehicles parking control, recorded; downloadable middleware for management of software functions on electronic devices; computer software for [specify function] for electronic driving assistance systems of automotive vehicles, recorded; computer programs for autonomous driving of automotive vehicles, recorded; computer programs for assisted driving of automotive vehicles, recorded,” in International Class 9.

“Updating of computer software; maintenance of computer software; computer software design; computer software research; developing of driver and operating system software; development of data processing computer programs; design and development of computer software for automotive vehicles; design and development of computer software architecture; providing paas (platform as a service) featuring computer software platforms for [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, and, if software is content - or field-specific, the field of use]; consultation and providing information in the field of design and development of computer software architecture for controlling the operation of automatic vehicles; maintenance of computer software architecture in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; design and development of computer systems architecture in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; maintenance of computer systems architecture in field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; design and development of computer systems framework in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; software development, programming and implementation in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; IT consultancy, advisory and information services for communication in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; IT consultancy, advisory and information services for computers in the field of automatic driving control systems and electronic driving assistance systems for automotive vehicles; development of computer software for automotive open system architecture solution; providing temporary use of non-downloadable computer software for [specify function] for automotive open system architecture solution,” in International Class 42.

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services 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 and/or services will further limit scope, and once goods and/or services 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 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.

U.S. Counsel Required

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

Response Guidelines

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

How to respond. Click to file a response to this nonfinal Office action

/Matt Einstein/

Matt Einstein

Trademark Examining Attorney

Law Office 115

571-272-8251

matt.einstein@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.