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. 79285420
Mark: HUAWEI
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Correspondence Address: |
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Applicant: Huawei Technologies Co., Ltd.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1530453
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).
· Requirement to Provide a Mark Description
· Requirement to Amend the Identification of Goods and Services
· U.S. Licensed Attorney Required
REQUIREMENT TO PROVIDE A MARK DESCRIPTION
The following description is suggested, if accurate: The mark consists of the wording “HUAWEI” in white text underneath a white half circle all contained within a red square with rounded corners.
REQUIREMENT TO AMEND 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.
International Class 9
The USPTO requires such specificity 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 “facial recognition apparatus” in the identification of goods is indefinite and must be clarified to further specify the nature of these goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
International Class 35
International Class 42
The wording “quality checking and testing” in the identification of services is indefinite and must be clarified to further specify the nature of the goods and to specify what is being tested. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “technological research” in the identification of services is indefinite and must be clarified to indicate the field or subject matter. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “software as a service [SaaS]; cloud computing; platform as a service [PaaS]” in the identification of services is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “quality system certification” in the identification of services is indefinite and must be clarified to further specify the nature of these services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
Applicant may adopt the following identification of goods and services, if accurate:
International Class 9
Virtual reality headsets; laptop computers; humanoid robots with artificial intelligence; downloadable computer software applications for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}; facial recognition apparatus in the nature of computer hard and recorded facial recognition software; wearable activity trackers; recorded computer programs for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}; recorded and downloadable computer software platforms for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}; smartphones; tablet computers; network communication equipment, namely, {applicant must further indicate the specific pieces of equipment, e.g., computer networking hardware}; downloadable software applications for mobile phones for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}
International Class 35
Provision and rental of advertising space on the Internet; online advertising on computer communication networks; providing commercial information and advice for consumers in the choice of products and services; providing business information via a web site; commercial administration of the licensing of the goods and services of others; providing business information via the Internet, wired network, or other forms of data transmission; promoting the goods and services of others; procurement services, namely, purchasing {applicant must indicate the specific goods or services, e.g., weapons, office furniture} for others; provision of an online marketplace for buyers and sellers of goods and services; compiling indexes of information for commercial or advertising purposes; search engine optimization for sales promotion; advertising services
International Class 42
Quality checking in the nature of product quality testing; technological research in the field of {applicant must indicate field or subject matter, e.g., computer hardware systems, renewable energy resources}; software as a service (SaaS) featuring software for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}; cloud computing featuring software for use {applicant must specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; platform as a service (PaaS) featuring software for {applicant must specify the purpose or function of the software and its content or field of use, if content- or field- specific}; research and development of computer software; design and development of computer software; electronic data storage; quality system certification, namely, testing, analysis and evaluation of the goods of others to determine conformity with certification standards; providing information relating to computer technology and programming via a web site
REQUIREMENT TO PROVIDE APPLICANT’S DOMICILE ADDRESS
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. 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 a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity of China and specifies applicant’s domicile as an address that is not a street address. In most cases, an address that is not a street address is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189.
To provide applicant’s domicile street address. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field enter in the text box applicant’s domicile street address. If a U.S. street address is provided as applicant’s domicile address, applicant must provide the same information and documentation requested above.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Owner” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, uncheck the box next to “Domicile Address,” and enter the new domicile address in the text box immediately below the checkbox. If applicant also needs to change its mailing address, applicant must do so through the International Bureau.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
U.S. LICENSED ATTORNEY 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.
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).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each requirement in this Office action. 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. Additionally, the response must be submitted and signed by applicant’s appointed U.S. licensed attorney.
How to respond. Click to file a response to this nonfinal Office action
Additional Response Guidance
QUESTIONS
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.
/Marco Wright/
Trademark Examining Attorney
Law Office 120
(571) 272-4918
marco.wright@uspto.gov