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. 79324412
Mark: ONKYO
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Correspondence Address: |
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Applicant: ONKYO CORPORATION
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1622987
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).
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
The wording listed below from the identification of goods and/or services is indefinite and must be clarified for the reasons stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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 may be classified in several international classes, any modification to this wording must identify goods in International Class 10 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt any or all of the following identifications, if accurate (changes shown in bold typeface):
International Class 10: Hearing aids; analog hearing aids; digital hearing aids; programmable hearing aids; electronic hearing aids; electric hearing aids; medical hearing instruments; Ear plugs for medical purposes, namely, ear molds specially adapted for hearing aids; Ear plugs for medical purposes, namely, ear wax guards specially adapted for hearing aids; Ear plugs for medical purposes, namely, ear wax guard filters specially adapted for hearing aids; Audiometers for medical purposes; stethoscopes; analog stethoscopes; digital stethoscopes; heartbeat measuring apparatus; analog heartbeat measuring apparatus; digital heartbeat measuring apparatus; pulse meters; analog pulse meters; digital pulse meters; sphygmomanometers; analog sphygmomanometers; digital sphygmomanometers; electrocardiographs; analog electrocardiographs; digital electrocardiographs; clinical thermometers; analog clinical thermometers; digital clinical thermometers; Medical diagnostic apparatus for testing {specify condition or subject matter tested, e.g., blood sugar levels, cancer cells, DNA, etc.} incorporating recorded software for {indicate function or purpose of software}; Sensors for medical use to be worn by a human to gather human biometric data and also including {indicate other goods sold as a unit with the sensors, e.g., an accelerometer, a gyroscope, etc.} sold as a unit; wearable monitors used to measure biometric data for medical use; Sensors for medical use to be worn by a human to gather human biometric data, namely, heart rate, body movement, and calories burned and also including monitors and displays sold as a unit; Sensors for medical use to be worn by a human to gather, measure, display, track, monitor, store, record, and transmit human biometric data, namely, heart rate, body movement, and calories burned and also including monitors and displays sold as a unit; auxiliary medical devices for use in treating or diagnosing {specify disease or condition} with integrated recorded operating system software, sold as a unit and orthodontic machines and instruments; Medical apparatus and instruments for use in surgery; parts, fittings and accessories for all the aforesaid goods
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 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); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. COUNSEL REQUIRED
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Japan. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/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. 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); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
/Catherine E. Sutton/
Catherine E. Sutton
Examining Attorney
Law Office 103
(571) 272-4136
catherine.sutton@uspto.gov
RESPONSE GUIDANCE