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. 1546134

 

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 issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Advisory: Prior-Filed Application
• Section 2(D) Refusal – Likelihood of Confusion
• Identification of Goods and/or Services Requires Amendment
• Standard Character Claim Inquiry
• U.S. Attorney Required
• Applicant’s Email Address Required

 

ADVISORY: PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88144690 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to the following refusal within six months of the mailing date of this Office action to avoid abandonment.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES TO CLASS(ES) 42 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4388180.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark HMS CORE is for “Technological research; research and development of new products for others; scientific research; conducting technical project studies; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; creating and maintaining web sites for others; conversion of computer programs and data, other than physical conversion; computer software consultancy; rental of web servers; providing search engines for the internet; web site design consultancy; information technology [IT] consultancy; electronic data storage; providing information relating to computer technology and programming via a web site; cloud computing; computer technology consultancy; computer security consultancy; development of drive and operating system software” in Class 42.

 

Registrant’s mark HMS is for “Scientific study and research in the fields of medicine and health care” in Class 42.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In this case, the marks are similar because they share common wording, and the goods and/or services are related because they are commonly provided by the same entities and under the same mark.

 

Similarity of Marks

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part as to the wording HMS.

 

Moreover, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first portion of applicant’s mark is HMS, which is identical to registrant’s mark. When encountering the marks of applicant and registrant in the marketplace, consumers are likely to focus on the dominant wording HMS and mistakenly believe the goods and/or services emanate from a single source.

 

Further, where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

For the foregoing reasons, the marks are confusingly similar.

 

Relatedness of Goods/Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe scientific research, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Scientific study and research in the fields of medicine and health care”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

For the reasons discussed above, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRES AMENDMENT

 

The wording identified below in the identification of goods and/or services is indefinite and too broad.  This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).   

 

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 and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in their respective class only, the class(es) specified in the application for these goods and/or services.  See TMEP §1904.02(c), (c)(ii).

 

The identification for software/computer programs/applications/platforms in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

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 international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

General Guidelines

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Furthermore, the identification of goods and/or services contains parentheses and 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 parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Additional guidance regarding specific identifications are set forth in further detail below. For suggested wording for identification amendments, please see the section of this Office Action entitled “Summary of Suggested Amendments.”

 

Summary of Suggested Amendments

 

To address the above issues, applicant may adopt any or all of the following identifications, with the necessary information added, if accurate. (proposed changes shown in bold typeface; instructions and comments to applicant set forth between curly brackets {}):

 

International Class 9

 

Data processing apparatus, namely, smartglasses; Data processing apparatus, smartwatches; computer hardware; computer memory devices; blank integrated circuit cards in the nature of smart cards; tablet computers; notebook computers; computer programs, recorded; downloadable computer software applications for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; humanoid robots with artificial intelligence; security token hardware; recorded or downloadable computer software platforms featuring software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; recorded computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; downloadable smartphone software applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; computer operating programs, recorded; liquid crystal display (LCD) screens; electronic pen; video and photo printer; computer stylus; face recognition device in the nature of {specify type of device, e.g., a facial scanner}; scales; smartphones; network communication equipment, namely, {specify Class 9 goods, e.g., Reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications}; microphones; cabinets for loudspeakers; headsets for {specify use, e.g., telephones, mobile phones, use with computers}; virtual reality headsets; dashboard cameras; set top box; loudspeakers; sound transmitting apparatus; camcorders; monitoring apparatus, other than for medical purposes, namely, {specify nature and/or type of apparatus, e.g., wireless controllers to monitor and control the functioning of other electronic devices}; video monitor; security surveillance robots; wearable video display monitors; television apparatus for projection purposes; Photographic cameras; selfie lenses, namely, lenses specially adapted for cameras; biochips for research or scientific purposes; infrared detectors; air analysis apparatus; laboratory robots; teaching robots; optical lenses; materials for electricity mains, namely, electric wires and cables; USB cables; USB cables for cellphones; electronic key fobs being remote control apparatus; video screens; integrated circuits; electronic chips in the nature of {specify Class 9 chips, e.g., electronic chips for the manufacture of integrated circuits}; touch screens; electric plugs; electric sockets; sensors, namely, {indicate specific Class 9 sensors, e.g., temperature sensors, ultrasonic sensors, pressure sensors}; digital {specify type of Class 9 lock, e.g., door} locks; central alarms in the nature of {specify nature and/or type of goods, e.g., anti-intrusion alarms}; batteries, electric; battery chargers; rechargeable battery for mobile phones; encoded identity cards; digital signal processors; electronic access control systems for interlocking doors; downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., books, magazines, brochures} in the field of {indicate subject matter of publication, e.g., music, science}; integrated circuit chips for {specify use, e.g., or digital video compression and decompression}; printed circuit boards; central processing unit (CPU) for information, data, sounds and images processing; central processing units

 

International Class 35

 

Presentation of goods on communication media, for retail purposes; advertising services; online advertising on a computer network; price comparison services; providing business information; providing commercial information and advice for consumers; business management assistance; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; marketing services; providing marketing information; procurement, namely, purchasing alcoholic beverages for others; providing marketing consulting in the social media field; outsourcing services for merchandising for others; import and export agency services; search engine optimization for sales promotion; data search in computer files for others in the nature of computer file management and compilation and systemization of data into computer databases; book-keeping in the nature of business records management; business auditing; account auditing; merger and acquisition accounting services; providing accounting services for others; consultation services and providing information about accounting; marketing in the framework of software publishing

 

International Class 36

 

Insurance brokerage; insurance information; currency trading; online real-time currency trading; bill payment service; providing securities market information; financing services; securities brokerage; financial information; electronic funds transfer; financial analysis; financial management; financial consultancy; online banking; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; processing of debit card payments; credit services, namely, {specify type of Class 36 services, e.g., credit card registration services, credit card payment processing services, credit card issuance services, credit card authorization services}; online banking with the help of a global computer network; money order services; electronic check acceptance services; processing of credit card payments; apartment house management; real estate management services; trust services, namely, investment and trust company services

 

International Class 38 – NO CHANGE SUGGESTED

 

International Class 41

 

Training in the field of communication technologies; teaching in the field of {indicate specific field, e.g. music, remedial reading}; instruction services, namely, conducting {indicate modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of {indicate specific fields, e.g. pet care, math, tax preparation}; training services, namely, providing training of {indicate specific group, e.g., teachers, engineers, etc.} for certification in the field of {indicate field of use} provided via simulators; providing online information about education; educational and entertainment services, namely, organization of competitions in the field of {indicate sport, e.g., basketball, soccer, swimming, chess}; arranging and conducting of educational colloquiums; arranging and conducting of educational symposiums; arranging and conducting of educational conferences; arranging and conducting of concerts; arranging and conducting of in-person educational forums in the field of {indicate subject matter or field, e.g., science}; online publication of electronic books and journals; providing online non-downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., books, magazines, brochures, etc.} in the field of {indicate subject matter of the publications}; providing amusement arcade services; preparation of subtitles for films; production of radio and television programmes; providing online music, not downloadable; providing online non-downloadable videos in the field of {indicate specific field, e.g., computers, music, art}; providing films, not downloadable, via video-on-demand services; providing television programs, not downloadable, via video-on-demand services; providing recreation facilities; entertainment information; game services, namely, {specify, e.g., casino gambling, conducting online computer game tournaments, etc.} provided online from a computer network; conducting fitness classes; audiovisual recording services; providing entertainment information via a web site; entertainment services, namely, {specify nature and/or type of Class 41 service, e.g., in the nature of live {specify nature of performance, e.g., dance, musical, magic} performances}; conducting guided tours, namely, {specify type of Class 41 tour, e.g., hiking tours, climbing tours, tours by {indicate, e.g., bicycle, canoe, roller skate}; ticket agency services for entertainment events; television entertainment in the nature of {specify nature of the Class 41 services, e.g., an ongoing television miniseries in the field of {indicate specific field, e.g., news, comedy, variety}; news reporters services

 

International Class 42

 

Technological research in the field of {indicate field or subject matter, e.g., computer hardware systems, renewable energy resources}; research and development of new products for others; scientific research; conducting technical project studies, namely, {specify type of technical project studies, e.g., the design and manufacture of microfluidic devices}; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; creating and maintaining web sites for others; conversion of computer programs and data, other than physical conversion; computer software consultancy; rental of web servers; providing search engines for the internet; web site design consultancy; information technology consultancy; electronic data storage; providing information relating to computer technology and programming via a web site; cloud computing featuring software for use {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}; computer technology consultancy; computer security consultancy; development of drive and operating system software

 

Amendment Guidelines

 

Please note that an 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, as noted above, 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). Therefore, any modification to the identifications must identify goods and/or services in the respective class assigned by the International Bureau for such goods and/or services.

 

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.

 

STANDARD CHARACTER CLAIM INQUIRY

 

To permit proper examination of the application, applicant must clarify whether the mark is presented in standard characters or in special form drawing format.  TMEP §807.03(h); see 37 C.F.R. §2.61(b).  The mark in the drawing shows minor font stylization; however, a mark in standard characters generally does not claim any particular font style, size, or color.  See 37 C.F.R. §2.52(a); TMEP §807.03(a), (c).

 

In this case, because the wording in the mark creates a distinct commercial impression apart from the stylized lettering, applicant may elect to have a standard character drawing of the mark.  See In re wTe Corp., 87 USPQ2d 1536, 1539-40 (TTAB 2008); TMEP §807.04.  A mark registered in standard characters provides the broadest protection of a textual mark in any lettering style, size, and color, whereas a special form drawing provides protection only for a specific depiction.  See 37 C.F.R. §2.52(a)-(b); TMEP §§807.03(a), 807.04(a). 

 

To clarify that the mark is in standard characters, applicant must submit the following statement:  “The mark consists of standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a). 

 

To clarify that the mark is in special form drawing format, applicant must provide (1) a statement to that effect and (2) an accurate description of the literal elements of the mark, if not already in the record.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate:  “The mark consists of the stylized wording “HMS CORE”.” 

 

For more information about standard character and special form drawings and how to satisfy the above requirements using the Trademark Electronic Application System (TEAS) online form, see the Drawing webpage.

 

U.S. 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).

 

APPLICANT’S EMAIL ADDRESS REQUIRED

 

Applicant must provide applicant’s email address, which is a requirement for a complete application.  See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020).  Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application.  See Examination Guide 1-20, at III.A. 

 

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

 

 

/Laura M. Wright/

Trademark Examining Attorney

United States Patent and Trademark Office

Phone: (571) 272-5421

Email: laura.wright@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.