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. 79308422
Mark: OPTIXSTAR
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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. 1585441
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
SUMMARY OF ISSUES:
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
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.
Applicant may substitute the following wording, if accurate (changes indicated in bold and strikethrough):
Class 9: Flexible flat panel displays for computers; smartglasses; smartwatches; computer hardware; computer memory devices; integrated circuit cards
[smart cards]; sleeves for laptops; tablet computers; covers for tablet computers; stands adapted for tablet computers; flat panel displays screens; laptop
computers; notebook computers; bags adapted for laptops; computer keyboards; computer mouse [computer peripheral]; computer game programmes,
recorded; computer game software applications, downloadable; electronic black boxes for recording data [data recorders];
interactive touch screen terminals; humanoid robots with artificial intelligence; electronic sheet music, downloadable; smart rings; security tokens hardware
[encryption devices]; personal digital assistants [PDAs]; computer game software platforms, recorded or downloadable; thin client computers; hand-held electronic
dictionaries; computer screen saver software, recorded or downloadable; computer game software, recorded; downloadable graphics for mobile phones; wearable computers in the nature of smartwatches; downloadable game software applications for use with mobile devices; downloadable emoticons for mobile phones;
computer operating programs, recorded; large-screen liquid crystal displays; electronic diaries; liquid crystal displays; electronic pens; portable digital electronic scales; smartphones; wearable
activity trackers; cases for smartphones; covers for smartphones; protective films adapted for smartphones; transponders; network communication equipment in the nature of network
routers; modems; switchboards; transmitters of electronic signals; video printers; computer styluses; computer game programs, downloadable; pedometers; fingerprint
identifiers in the nature of fingerprint scanners; human face recognition devices being computer hardware; scales; weighing scales; scales with body mass
analyzers; transmitting sets being sound transmitting apparatus [telecommunication]; programme-controlled telephone exchange equipment, namely,
automatic telephone exchanges; radios; telecommunication apparatus in the form of jewelry, namely, smartwatches; selfie sticks for use with smartphones; head-clip holders for cell phones; intercoms; wrist-mounted smartphones; digital photo frames; microphones; cabinets for loudspeakers; headphones; telephone
headsets; virtual reality headsets; video recorders for cars; set-top boxes; loudspeakers; portable media players; sound transmitting apparatus; camcorders; monitoring apparatus, other than for
medical purposes, namely, alarm monitoring systems; video monitors; audio interfaces; electric and electronic effects units for musical instruments; equalizers [audio
apparatus]; security surveillance robots; wearable video display monitors; television apparatus for projection purposes; car televisions; ultra high definition televisions;
liquid crystal display televisions; air analysis apparatus; laboratory robots; teaching robots; optical lenses; materials for electricity mains, namely, electrical cables
[wires, cables]; USB cables; USB cables for mobile phones; electronic key fobs being remote control apparatus; video screens; integrated circuits; selfie sticks [hand-held monopods];
cameras [photography]; thermal imaging cameras; selfie eyeglass lenses; connected bracelets in the nature of smartwatches [measuring
instruments]; gas testing instruments; digital weather stations instruments; biochips for research or scientific purposes; infrared detectors;
blank electronic chip cards; touch screens; electric plugs; electrical outlets; electrical transducers; digital door locks; central alarms, namely, alarm central units; batteries, electric; chargers for electric batteries; rechargeable batteries; cards encoded with security features for identification purposes; digital
signal processors; short range radios; electronic access control systems for interlocking doors; electronic publications, downloadable, in the nature of magazines in the field of
smartphones; computer chips [integrated circuits]; printed circuit boards; printed circuits; central processing units for processing information, data, sound or
images; data processors [central processing units]
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.
MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of “OptiXstar” in stylized form to the right of an incomplete, four-point star design.
EMAIL ADDRESS AND U.S. COUNSEL REQUIRED
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.
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).
ASSISTANCE
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.
How to respond. Click to file a response to this nonfinal Office action.
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
Examining Attorney
Law Office 105
RESPONSE GUIDANCE