Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 13, 2020

 

International Registration No. 1506294

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 23, 2020.

 

In a previous Office action(s) dated January 29, 2020, applicant was required to satisfy the following requirements: amend the identification of goods, provide entity type and citizenship, and translation of wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: entity type, citizenship, and translation of wording provided.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUE(S) MADE FINAL that applicant must address:

• Requirement – Amend Identification of Goods

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

The wording “Accessories namely, floor stands, wall mounts, fixing collars and trolleys all adapted for use with video and computer monitors, audio visual equipment, and loudspeakers” in the identification of goods in International Class 9 is too broad and must be clarified because it could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c).  For example, “floor stands, wall mounts, fixing collars all adapted for use with video and computer monitors, audio visual equipment, and loudspeakers” are in International Class 9 and “trolleys” are in International Class 12.

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that 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 may be classified in several international classes, any modification to this wording must identify goods in International Class 9 only, the class(es) specified in the application for these goods.  See TMEP §1904.02(c).

 

Applicant may adopt the following wording in International Class 9, if accurate:  “Accessories namely, floor stands, wall mounts, and fixing collars and trolleys all adapted for use with video and computer monitors, audio visual equipment, and loudspeakers.”

 

The wording “electric and electronic apparatus, namely, electrical switches for tape recorders and for cassette recorders, junction boxes for earphones, electrical switches for video apparatus, mounting adapters for television sets” in the identification of goods is indefinite and must be clarified because the wording “mounting adapters for television sets” is incongruous with the nature of the goods as electric or electronic apparatus.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “electric and electronic apparatus, namely, electrical switches for tape recorders and for cassette recorders, junction boxes for earphones, electrical switches for video apparatus, {specify type of adapters, e.g., power, etc.} adapters for television sets.”

 

The wording “height adjustable and office tables, namely, clamping tables for fastening electric and electronic apparatus” in the identification of goods is indefinite and must be clarified because the wording “clamping tables for fastening electric and electronic apparatus” is incongruous with the nature of the goods as “height adjustable and office tables”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “clamping tables for fastening electric and electronic apparatus.”

 

Applicant may adopt the following identification, if accurate:

 

Class 9: Accessories namely, floor stands, wall mounts, and fixing collars all adapted for use with video and computer monitors, audio visual equipment, and loudspeakers; electric and electronic apparatus, namely, electrical switches for tape recorders and for cassette recorders, junction boxes for earphones, electrical switches for video apparatus, {specify type of adapters, e.g., power, etc.} adapters for television sets

 

Class 20: Shelves specially designed for storing electric cables; items of furniture and parts therefor, specially designed for audio and video apparatus and for data processors; clamping tables for fastening electric and electronic apparatus

 

Applicant may amend the identification 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.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Calloway, Christina

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 13, 2020 for

U.S. Trademark Application Serial No. 79275280

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Calloway, Christina

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”