Offc Action Outgoing

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).

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.

SEARCH OF USPTO DATABASE OF MARKS

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.

SUMMARY OF ISSUES:

IDENTIFICATION OF GOODS
ENTITY & COUNTRY OF INCORPORATION OMITTED
DESCRIPTION OF MARK WITH COLOR REQUIRED
EMAIL ADDRESS REQUIRED
U.S. LICENSED ATTORNEY REQUIRED

IDENTIFICATION OF GOODS

International Class 009

Unacceptable Goods Without Suggested Amendments

Applicant has identified “electric hair curlers” and “coin-operated gates for car parking facilities” in class 009. This wording is both indefinite and misclassified. Specifically, “electric hair curlers” describes both class 008 curling irons and class 026 hair curlers other than hand implements (note: implements are class 008 hand held curling devices). Similarly, because applicant has not identified the material of which its “coin-operated gates for parking facilities” are comprised, it describes both class 006 coin-operated metal gates for car parking facilities and class 019 coin-operated non-metal gates for car parking facilities.

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in the identifications of goods. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the two identifications are indefinite and do not appear to describe any goods in class 009. See TMEP §1904.02(c)(iii).

Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 009 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international class(es) assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).

Use of “and/or” and “or” in the Identification of Goods

Applicant has included the term “and/or” or “or” in the identification of goods and/or services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, applicant has used “or” in a way that makes it unclear whether applicant intends to use the mark on all the identified goods.

An application must specify, in an explicit manner, the particular goods or services 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.

Parentheses

The identification of goods and/or 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 or bracketed information into the description of the goods and/or services.

Identification of Goods Contains Unacceptably Indefinite Wording

The identification of goods is indefinite and must be clarified because the wording is overly broad, requires specificity of the field or the intended use or purpose, or otherwise does not clearly indicate the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification 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. Applicant has been provided specific guidance in amending the identification of goods in the bolded and bracketed portions of the suggested amendment.

The following substitute wording is suggested, if appropriate.

International Class 009

Laboratory apparatus and instruments, namely, ___ {specify the common commercial name of the apparatus and instruments in class 009, e.g. “homogenizers”}; measuring and {replace “or” with “and” or delete any goods not actually available in commerce} testing apparatus and instruments, namely _________ {specify common commercial name of the goods and indicate what is tested and measured, e.g., “apparatus and instruments for measuring and testing blood and other bodily fluids”}; power distribution and {replace “or” with “and” or delete any goods not actually available in commerce} control machines and apparatus, namely _______ {please indicate common commercial name of the apparatus and instruments e.g., “power distribution boxes,” “power controllers”}; batteries and ______ {please indicate the type of cells, e.g. “electrical cells”} cells; electric or magnetic meters and testers, namely _______ {please indicate what is measured and tested by the goods, e.g. “electric meters and magnetic battery testers”}; electric wires and cables; photographic apparatus and instruments, namely, ______{please indicate the common name or the use/purpose for the goods e.g., “underwater housings for cameras,” “underwater enclosures for cameras and photographic lenses”}; cinematographic apparatus and instruments, namely ________ {please indicate the common name or use/purpose for the apparatus and instruments e.g., “cinematographic cameras and apparatus for editing cinematographic film”}; optical apparatus and instruments, namely _______{please indicate the common name or use/purpose for the apparatus and instruments e.g., “optical ports for underwater photography,” “dome ports for underwater photography,” “wet diopters,” “adapter lenses for underwater photography”}; eyeglasses and goggles, namely, __________ {please indicate the use or purpose for the goggles is a class 009 use or purpose, e.g., “eyeglasses and safety goggles”}; glass covered with an electrical conductor; ultraviolet ray-absorbing and transmitting glass, not for building, namely ____ {please indicate the use or purpose for the goods, e.g., “glass incorporating fine electrical conductors”}; infrared ray-absorbing glass not for building, namely _____ {please indicate the use or purpose for the infrared ray-absorbing glass is a class 009 use or purpose, e.g “for use in conducting electricity”; optical glass {please clarify the use/purpose for the glass, e.g. “optical glass for use in manufacturing optical lenses”}; life-saving apparatus and devices, namely, _______ {please indicate class 009 goods, e.g. “life preservers”}; telecommunication machines and apparatus in the nature of _____ {please indicate class 009 goods, e.g. “wireless receivers for portable media players”}; phonograph records featuring ____ {please indicate the subject matter featured on the records, e.g., “featuring music”}; electronic machines, apparatus and their parts, namely _____ {please indicate the common name for the goods and indicate the parts are confined to class 009 e.g. “electronic machines for reading credit cards and parts therefor”}; ozonisers; electrolysers; satellites for scientific purposes; amusement machines and devices for use in amusement parks, namely, ________ {please state the common name for the machines and devices, e.g. “currency counting machines”} slot machines; sports training simulators, namely, ____ {please clarify the goods are in class 009, e.g., “electronic sports training simulators”}; vehicle drive training simulators; rotary converters; phase modifiers; electric flat irons {goods are misclassified and belong in class 008}; electric hair-curlers, namely, ____ {specify class 009 goods or applicant may delete. See explanation above}; electric buzzers; railway signals; vehicle breakdown warning triangles; luminous or mechanical road signs; fire alarms; gas alarms; gloves for protection against accidents; fire extinguishers; fire hydrants; fire hose nozzles; fire engines; fire boats; sprinkler systems for fire protection; anti-theft warning apparatus, namely, _____ {please clarify the commercial name for the goods, e.g., “locks specially adapted to laptops and PC tablets”}; protective helmets; fireproof garments; dust masks; gas masks; magnetic cores; cigar lighters for automobiles; resistance wires; electrodes; exposed cinematographic films; exposed slide films; slide film mounts; recorded video discs and tapes featuring ____ {please indicate the subject matter featured on the discs and tapes e.g. “featuring cartoons”}; gasoline pumps for service stations, namely, _____ {please indicate class 009 function or purpose, e.g. “metered gasoline pumps”}; vending machines; coin-operated gates for car parking facilities, {specify class 009 goods. This wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods and/or services in international class 009 – see discussion above. Alternatively, applicant may delete this entry from the identification of goods}; cash registers; slide-rules; coin counting or sorting machines; electronic numeric displays; photocopying machines; manually operated computing apparatus, namely, ______ {please indicate the commercial name for the goods e.g., “calculating scales”}; drawing or drafting machines and apparatus, namely, ____{please indicate the commercial name for the goods, e.g., “drawing tablets being computer input devices”}; time and date stamping machines; time recorders; electric computing machines, namely ____ {please indicate the commercial name for the goods, e.g., “calculators”}; punched card office machines; voting machines; billing machines; postage stamp checking apparatus; weight belts, namely, ____ {please indicate class 009 function or purpose, e.g. “weight belts for scuba diving”}, diving suits {individual entries must be separated by semicolons}; air tanks and regulators for scuba diving {individual entries must be separated by semicolons}; inflatable swimming floats, namely, _____ {please indicate class 009 function or purpose, e.g. “inflatable swimming floats for use as life-preservers”}; swimming flutter boards, namely, _____ {please indicate class 009 function or purpose, e.g. “inflatable swimming flutter boards for use as life-preservers”; diving machines and apparatus not for sports, namely, ____ {please indicate class 009 goods, e.g. “underwater dive computers”}; electric arc welding machines {goods misclassified and belong in class 007}; Recorded consumer video games software; game software downloadable from computer networks; metal cutting apparatus by arc, gas or plasma {goods misclassified and belong in class 007}; egg-candlers; electric welding apparatus, namely, ______ {please indicate the common name for the goods, e.g., “welding masks”}; electric door openers; metronomes

International Class 010

Punctuation in IDs (Advisory)

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.

International Class 010

Medical apparatus and instruments for use in_____{please indicate class 010 function or purpose, e.g. “diagnostic apparatus and instruments for the detection of cancer,”}; surgical apparatus and instruments; therapeutic apparatus and instruments, namely,_____{please indicate the commercial name for the goods or the use/purpose for the goods, e.g., “infrared radiator units for therapeutic purposes” or “therapeutic apparatus and instruments, hospital supportive equipment for use in for delivering specifically engineered pressure and gas mixtures for medical benefit”}; hospital supportive equipment, namely,_____{please indicate the commercial name for the equipment, e.g., “hospital gurneys”}; dental apparatus and instruments, namely,___ {please indicate the commercial name for the goods, e.g., “Milling apparatus for dental purposes”}; veterinary apparatus and instruments, namely, _____{please indicate the commercial name for the goods, e.g., “Surgical apparatus and instruments for veterinary use”}; auxiliary medical devices and orthodontic apparatus, namely, {Please indicate the commercial name for the goods e.g. “orthodontic headgear and brackets”}; medical X-ray apparatus; ice bag pillows for medical purposes; triangular____ bandages {please clarify the type of bandages, e.g. “triangular support bandages”}; supportive bandages; surgical catguts; feeding cups for medical purposes; dropping pipettes for medical purposes;____teats {please clarify the nature of the goods, e.g., “Feeding bottle teats”}; medical ice bags; medical ice bag holders; baby bottles; vacuum bottles for nursing; finger guards for medical purposes; contraceptive devices; artificial tympanic membranes; prosthetic filling materials not for dental use, namely,_____{please indicate function or purpose for the goods, e.g., “prosthetic filling materials not for dental use namely, putty for use in the replacement of bones”}; ear plugs for____ {please state the use/purpose for the goods, e.g., “ear plugs for medical purposes”}; gloves for medical purposes; electric massage apparatus for home or personal use; urinals being_____{please clarify the nature of the goods, e.g., “urinals being vessels”} for medical purposes; bed pans; ear picks.

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 amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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).

ENTITY & COUNTRY OF INCORPORATION OMITTED

The application does not indicate applicant’s legal entity type and citizenship, or state or country of organization or incorporation. Accordingly, applicant must specify its legal entity type and its national citizenship or the U.S. state or foreign country of organization or incorporation. See 37 C.F.R. §§2.32(a)(3)(i)-(v), 2.61(b); TMEP §§803.03, 803.04. Acceptable legal entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq.

If applicant’s legal entity type is an individual, applicant must so specify and provide his or her national citizenship. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a).

If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the U.S. state or foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.04. For a U.S. partnership or joint venture, applicant must also list the names, legal entity types and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers. 37 C.F.R. §2.32(a)(iii)-(iv); TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated. TMEP §803.03(c).

DESCRIPTION OF MARK REQUIRED

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not explicitly state whether color is being used in the mark. 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(b). Applications for marks depicted in color must include a color drawing and a statement (1) listing all the colors claimed as a feature of the mark and (2) describing where each color appears in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(b). Because the application does not include an explicit statement about color, the record is not clear as to whether it is a feature of the mark.

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 word OLYMPUS above a line which is tapered at both ends.

(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 colors blue and yellow are claimed as a feature of the mark.”

Description: “The mark consists of the following: the word OLYMPUS in blue above a yellow line which is tapered at both ends.”

EMAIL ADDRESS 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.

U.S. LICENSED ATTORNEY REQUIRED

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).

RESPONSE GUIDELINES

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.

Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or 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.

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(s) and/or requirement(s) 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.

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

/Charles F. Miller/

Charles F. Miller

Examining Attorney

Law Office 112

(571) 272-8123

charles.miller1@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.