Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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). 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES

 

·       Requirement to Provide a Mark Description

·       Requirement to Amend the Identification of Goods and Services

• Requirement to Provide Applicant’s Domicile Address

·       U.S. Licensed Attorney Required

 

 

REQUIREMENT TO PROVIDE A MARK DESCRIPTION

 

Applicant must submit a description of the mark, because one was not included in the application.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  In this case, the drawing of the mark is not in standard characters.

 

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

 

The identification of goods and/or 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 that have been deleted from registrations or in an affidavit of incontestability to indicate goods 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 the goods and/or services.

 

International Class 9

 

The identification for “computer software applications, downloadable; computer programs, recorded; computer software platforms, recorded or downloadable; downloadable software applications for mobile phones” in International Class 9 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 §§1402.03(d), 1402.11(a). 

 

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. 

 

The wording “network communication equipment” in the identification of goods is indefinite and must be clarified to further indicate the specific goods.  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.  See 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 35

 

The wording “procurement services for others [purchasing goods and services for other businesses]” in the identification of services is indefinite and must be clarified to indicate the specific goods and/or services being purchased.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

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

 

 

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).

 

 

REQUIREMENT TO PROVIDE APPLICANT’S DOMICILE ADDRESS

 

Applicant must provide applicant’s domicile address.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; 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.  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

 

• 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.  The response must be submitted and signed by applicant’s appointed U.S. licensed attorney.

 

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

 

 

QUESTIONS

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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