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. 79283003
Mark: BOE
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Correspondence Address: |
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Applicant: BOE TECHNOLOGY GROUP CO., LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1524695
Notice of Provisional Full Refusal
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).
SEARCH OF USPTO DATABASE OF MARKS
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS AND SERVICES
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant may adopt the following wording, if accurate:
Class 9
Electronic interactive whiteboards; computer whiteboard software, namely, downloadable software for connecting whiteboards to computers and
functioning as an interactive whiteboard; electronic tags for goods containing electronic recorded or encoded messages; electronic
tags for good containing optical recorded or encoded messages; electronic indicator panels; digital signs displaying escutcheon;
digital signs; light-emitting electronic laser pointers; automatic advertising media player; electronic scoreboards; electronic
display interface installations for vehicles; viewfinders, photographic; wire harness products, namely, electric wire harnesses for automobiles; electronic
numeric displays; computer flat panel display screens; electroluminescent flat panel display panels; thin film transistor liquid crystal display
[TFT-LCD] panels; liquid crystal display [LCD] screens monitors; organic light-emitting diodes [OLED] display panels; organic light-emitting diodes
[OLED]; digital signal signage display panels; theft prevention installations, electric, namely, [indicate Class 9 specific devices by generic
names, e.g., cameras]; cameras for monitoring and inspecting nuclear power plant installations; connected bracelets, namely, magnetic encoded identification bracelets
[measuring instruments]; transparency projection apparatus; rearview cameras for vehicles; electronic automobile data recorder; car televisions;
car video recorders for cars; electronic control units for automobiles for regulating start up electrical motors; kilometer recorders for vehicles;
wearable computers in the nature of [indicate Class 9 goods specifically, e.g., smartwatches, smartglasses, etc.]; smartglasses being wearable
computers[data processing equipment]; smartwatches being wearable computers [data processing equipment]; smarty ring [data processing equipment];
encoded identification bracelets, magnetic; wearable activity trackers; interactive touch screen terminals; humanoid robots with artificial intelligence; downloadable computer
software for controlling self-service terminals; electronic locks incorporating biometric fingerprint scanners; fingerprint imagers; handprints testing machine,
namely, fingerprint scanner; face recognition device, namely, biometric retinal scanners; digital voice signal processors; electronic and magnetic identity cards for payment
services; computer terminals for banking purposes; virtual reality headsets; headsets for virtual reality games; downloadable computer programs for user
interface design; downloadable virtual reality game software; downloadable computer programs for video games and computer games programs; downloadable virtual reality software for medical instruction purposes; optical telecommunications apparatus, namely, [indicate Class 9 specific goods by generic names,
e.g., optical glasses, optical scanners]; optical glasses; optical phase shifters; optical fibers [light conducting filaments]; microscope
objectives [optics] [lenses]; filters for optical devices; fibre optical couplings; optical semi-conductor optical amplifiers; photovoltaic
systems that converters sunlight into electric and thermal energy; electronic personal organizers; capacitive stylus for touch screen device; electronic tags for goods; computer monitors [computer hardware]; flat panel display screens; light-emitting diode [LED] displays;
electrophoretic displays; large-screen liquid crystal displays televisions [LCDs]; flexible flat panel display screens for computers; wearable video display monitors;
head-mounted video display monitors; microchip cards; chipcards; DNA chips; biochips for research or scientific purposes; printed circuits; integrated circuit chips for encoding and decoding digital video [integrated circuits]; electronic chip for the manufacture of integrated
circuits; microchips [computer hardware]; biometric identification scanners; testing apparatus not for medical purposes, namely, [indicate class 9 specific goods by
generic names, e.g., electronic apparatus for testing radio frequency signals]; infrared detectors; mutual electrical inductor; electric transducer;
ultrasonic sensors; photovoltaic sensors; touchscreen sensors; electric light-emitting diode [LED] position sensors; pressure sensors; liquid level sensors; infrared
sensors; alarm sensors for alarm; X-ray apparatus not for medical purposes; electric light dimmers
Class 35
Presentation of goods on communication media, for retail purposes Providing television home shopping services in the field of general consumer merchandise; organization and conducting of presentation of products; online promotion on computer network and websites; market research studies; marketing services; price comparison services; business information; market intelligence services; collection of market canvassing research information; market canvassing
research by means of a computer database; market studies and analysis of market studies; marketing for others' the goods and
services of others; advertising services; publicity consultation; compilation of information into computer databases; updating and
maintenance of data in computer databases; updating and maintenance of information in registries; provision of commercial and business contact information; providing business advice; analysis of
business data and statistics on market canvassing research; consumer research; providing business information via a web site; sales promotion for others;
systemization of information into computer databases; provision of an online marketplace for buyers and sellers of goods and services
Class 37
Repair and maintenance of amusement machines and apparatus; repair of electronic apparatus installations; repair and maintenance of optical machines and instruments; repair and maintenance of video machines and apparatus; technical advisory services relating to installation of audiovisual equipment; repair of consumer electronics
Class 40
Custom assembling of materials for products for others; providing information relating to material treatment
information; electroplating; metal casting; grinding
Class 41
Virtual reality games services provided on-line from a computer network; providing virtual reality game amusement arcade services provided on-line from a computer network
Class 42
Design and development of virtual reality software; design and development of multimedia products; software development in the framework of software publishing; design and development of computer game software; research in the field of semiconductor processing technology; design and development of computer hardware for the manufacturing industry
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.
DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of the stylized wording “BOE” where the letter “O” is underlined.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. 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 a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
How to respond. Click to file a response to this nonfinal Office action.
/Kamal Bal/
Kamal S. Bal
Examining Attorney
Law Office 119
571-272-5645
kamal.bal@uspto.gov
RESPONSE GUIDANCE