United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79296593
Mark: PERIFIT
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Correspondence Address:
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Applicant: X6 Innovations
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1557062
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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 AND SERVICES
The identification of goods highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the goods and intended consumer as well as its main purpose and intended uses. 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).
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).
The recitation of services highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Applicant must be as complete and specific as possible, and avoid the use of indefinite words and phrases.
The identification of goods and services contains parentheses. 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 from the identification and incorporate any parenthetical information into the description of the goods and services. Applicant may also delete the parenthetical information where indicated below.
Applicant may adopt the following amended identification of goods and services suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods and services. The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language. Please note proposed changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney:
International Class 009: Measuring instruments and apparatus, namely, ________ {clarify goods, e.g. length measuring gauges, bevels,
measuring rulers}; data processing apparatus; recorded computer software (recorded programs) ______ {specify the function of
the programs, e.g. for use in database management, for use as a spread sheet, for word processing, and, if program is content- or field-specific, the content or field of use}
International Class 010: Medical apparatus and instruments, namely, ________ {clarify goods, e.g. pelvic floor exercisers for use to treat symptoms of urinary incontinence and for therapeutic purposes, implantable ports, lung ventilators with monitoring capability, a spinal fusion device}
International Class 028: Games, namely, ________ {clarify types, e.g. board games, card games, arcade games}; controllers for game consoles; appliances for gymnastics
International Class 035: Advertising services; arranging subscriptions to telecommunication services for others; computerized file management service; online advertising on a computer network; rental of advertising space; dissemination of advertisements
International Class 042: Technical evaluations concerning design, namely, engineering design services (engineers' services); technical research services in the field of ______{indicate field or subject matter in Class 42, e.g. computer software, pharmaceutical
studies}; software design; software development; research and development of new products for third parties; conducting of technical project studies, namely, ________ {clarify
service, e.g. conducting scientific feasibility studies, conducting of feasibility studies in the field of new technologies}; software development (design); {delete duplicative services} maintenance of software; updating of software; software rental; programming for computers; computer system analysis; computer system design; services provided by consultants consultancy relating to computer hardware design and development; digitization of documents; software as a service (SaaS)
services featuring software ______ {specify the function of the programs, e.g. for use in database management, for service desk management, for accounting, and, if software is
content- or field-specific, the content or field of use}; cloud computing, namely, ________ {clarify service, e.g. providing virtual computer systems and virtual computer
environments through cloud computing, integration of private and public cloud computing environments, cloud computing featuring software for use in database management}; information technology
(IT) consultancy; hosting of servers; electronic data storage
International Class 044: Medical services; medical assistance; rehabilitation clinic services, namely, _______ {clarify services, e.g. rehabilitation patient care services, medical rehabilitation clinics for substance abuse patients}; alternative medicine 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.
EMAIL ADDRESS REQUIREMENT
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.
U.S. COUNSEL REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.
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.
/Hai-Ly Lam/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 119
Tel. 571-272-3354
hai.lam@uspto.gov
RESPONSE GUIDANCE