United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79291932
Mark: GODOX
|
|
|
Correspondence Address: |
|
|
Applicant: GODOX PHOTO EQUIPMENT CO., LTD.
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
International Registration No. 1546228
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
IDENTIFICATION OF GOODS INDEFINITE – AMENDMENT REQUIRED
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
The wording “Sterilized medical instruments,” “dental apparatus and instruments,” and “orthopedic articles,” in the identification of goods in Class 010 is indefinite and must be clarified because it is unclear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
For the “sterilized medical instruments” and “dental apparatus and instruments”, applicant must identify the specific type of instruments and apparatus, e.g., surgical instruments, dental bridges, etc.
For the “orthopedic articles”, applicant must clarify the type of articles, e.g., orthopedic walkers.
For each identification, applicant must more clearly identify the specific type of medical or dental instrument or article being claimed.
The wording “disinfectant apparatus” and “sterilizers for medical use” in the identification of goods in Class 011 is indefinite and must be clarified because it is unclear what the goods are and applicant must more clearly identify the function of the disinfecting and sterilizing goods, e.g. apparatus for disinfecting water, air, sterilizing apparatus, etc.. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must identify the specific use of the apparatus and more clearly identify the type of sterilizer claimed.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 011 only. See TMEP §1904.02(c), (c)(ii).
Applicant may substitute the following wording, if accurate:
Class 008: “Hand-operated sharpening instruments; hand-operated hand tools, namely, {specify type of hand tool, e.g. hand drills, hack saws, cutting tools, etc.}; hand-operated gardening tools, namely, {specify type of gardening tool, e.g. trowels, weeding forks, spades, hoes, etc.}; depilation appliances, electric and non-electric; laser hair removal apparatus, other than for medical purposes; razors, electric or non-electric; hair clippers for personal use, electric and non-electric; hand instruments, namely, shearers; tweezers; scissors.”
Class 010: “Sterilized medical instruments for {specify use of medical instrument, e.g. cutting tissue, percutaneous tracheostomy, etc.}; medical and surgical lamps; dental apparatus and instruments, namely, {specify type of apparatus or instrument, e.g. prophy angles, oral irrigators, crown and bridge removers, etc.}; filters for ultraviolet rays, for medical purposes; ultraviolet ray lamps for medical purposes; gloves for medical purposes; feeding bottles; orthopedic articles, namely, {specify type of article, e.g., walkers, braces, shoes, etc.}; suture materials.”
Class 011: “Arc lamps; ultraviolet halogen metal vapor lamp; germicidal lamps for purifying air; ultraviolet ray lamps, not for medical purposes; electric air deodorizing apparatus for refrigerators; air purifying apparatus and machines; germicidal lamps for purifying air, namely, germicidal burners; radiators for heating; bath installations; disinfectant apparatus for {specify use or purpose of apparatus, e.g., banknotes, medical purposes, industrial purposes, etc.}; sterilizer units for medical use”
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.
ENTITY INDEFINITE
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “Corporation” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
COLOR CLAIM - AMENDMENT REQUIRED
To clarify whether color is claimed as a feature of the mark, applicant must satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit (a) a new black-and-white drawing of the mark to replace the color drawing in the record, (b) a statement that no claim of color is made in the international registration, and (c) a description of the literal and design elements in the mark omitting any reference to color. 37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the wording “GODOX” in a stylized font.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors claimed as a feature of the mark and (b) describing where the colors appear in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(b), 807.12(c). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must include a statement indicating that in the description. See TMEP §807.07(d), (d)(iii).
The following color claim and description are suggested, if accurate:
Color claim: “The color orange is claimed as a feature of the mark.”
Description: “The mark consists of the following: The wording “GODOX” in stylized orange font.
FOREIGN APPLICANT WITH FOREIGN ATTORNEY – 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 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.
How to respond. Click to file a response to this nonfinal Office action.
/John Spencer Sanders II/
J. Spencer Sanders II
Examining Attorney
Law Office 113
(571) 270-1802
john.sanders@uspto.gov
RESPONSE GUIDANCE