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. 79335866
Mark: XIAOMI
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Correspondence Address: |
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Applicant: XIAOMI INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1650229
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).
NO LIKELIHOOD OF CONFUSION
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.
IDENTIFICATION OF GOODS AND SERVICES
Applicant must amend the identification of goods and services to provide an acceptable identification.
The identification of goods and/or services contains parentheses and brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is 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).” See TMEP §1402.12. Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
The wording “BLUETOOTH” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See attached U.S. Registration No(s). 2909356 and 2911905.
The wording “THERMOS” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See attached U.S. Registration No(s). 0229816, 0176064, 0067002, et al.
Additionally, the term EWALLETS® is a registered mark that is not owned by applicant and this term, or the hyphenated form “e-wallets,” must be deleted from the identification and replaced with the common commercial or generic name for these goods, such as “electronic wallets.” TMEP §1402.09; see 37 C.F.R. §2.32(a)(6). See attached information about U.S. Registration No. 3466971.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording, such as a registered term. See TMEP §§1402.01, 1402.09. The misspelling or phonetic equivalent of a registered mark should similarly be excluded, unless it is the common name of the goods and/or services. TMEP §1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods and/or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may substitute the following wording, if accurate:
“Dyes for use in the manufacture of {specify use, e.g., leather, fur, wood}; watercolour paints; food dyes; toner cartridges, filled, for printers and photocopiers; ink for printers and photocopiers; ink cartridges, filled, for printers and photocopiers; coatings for wood as paints; anti-tarnishing preparations for coating metals; mastic being unprocessed natural resin” in International Class 2.
“Baby wipes impregnated with cleaning preparations; cakes of toilet soap; laundry detergent; shining preparations being polish; sharpening preparations being pumice stones for personal use; essential oils; cosmetics; dentifrices; potpourris; non-medicated mouth washes for pets; air fragrancing preparations” in International Class 3.
“Agricultural machines, namely, cultipackers; agricultural implements other than hand-operated; aerating pumps for aquaria; mechanized livestock feeders; electronic feeders for animals; milking machines; hair cutting machines for animals; woodworking machines; papermaking machines; diaper producing equipment; printing presses; darning machines; dyeing machines; food preparation machines, electromechanical; beverage preparation machines, electromechanical; brewing machines; tobacco processing machines; leather-working machines; ironing machines; machines for the bicycle industry; machines for the ceramic industry, namely, ceramic machines for the construction industry; engraving machines; industrial inkjet printing machines; machines for battery industry; cord making machines; pen making machines; light bulb making machines; electric vacuum food sealers for household purposes; electric juicers; juice extractors, electric; dishwashers; coffee grinders, other than hand-operated; kitchen machines, electric, namely, electric standing mixers; blenders, electric, for household purposes; mills for household purposes, other than hand-operated; food processors, electric; electrical coffee grinders; mixing machines; clothes washing machines; wringing machines for laundry; disintegrators; embossing machines; glass-working machines; electromechanical machines for chemical industry; rinsing machines; cutters being machines for cutting {specify}; drilling rigs, floating or non-floating; mixers being kitchen machines; whitewashing machines; lifting apparatus; handling apparatus for loading and unloading; conveyors being machines; electric hammers; foundry machines; steam condensers being parts of machines; carburetors; hydraulic turbines; industrial robots; handling machines, automatic in the nature of manipulators; cowlings being parts of machines; electric wire and cable manufacturing machines; electromotion screwdriver; electric hand-held drills; hand-held electric drills, excluding electric coal drill; painting machines; dynamos; filters for cleaning cooling air, for engines; motors, electric, other than for land vehicles; pumps for machines not being land vehicles; pneumatic pumps; valves being parts of machines; aerocondensers; hydraulic couplers; transmissions for machines; control mechanisms for machines, engines or motors; bearings being parts of machines not for land vehicles; belts for machines; rubber tracks being parts of crawlers on construction machines; welding apparatus, gas-operated; rechargeable sweepers; floor scrubbing machines; machines and apparatus for cleaning, electric; electric cordless sweepers; cordless vacuum cleaners; vacuum cleaners; electric vacuum cleaners; steam mops; brushes for vacuum cleaners; dust filters and bags for vacuum cleaners; sifting installations; curtain drawing devices, electrically operated; drums being parts of machines; 3D printers; shoe polishers, electric; racket stringing machines; vending machines; labeller machines; robotic exoskeleton suits, other than for medical purposes; 3D printing pens; electroplating machines” in International Class 7.
“Abrading instruments being hand instruments; agricultural implements, hand-operated; garden tools, hand-operated; instruments and tools for skinning animals; harpoons for commercial fishing; razors, electric or non-electric; electric hair crimper; nail clippers; beard clippers; razor blades; electric irons for styling hair; electric hair straighteners; screwdrivers, non-electric; flat irons; tweezers; knives; side arms, other than firearms; table cutlery being knives, forks and spoons; handles for hand-operated hand tools; hand tools, hand-operated” in International Class 8.
“Downloadable computer software for controlling and managing access server applications; computer peripheral devices; notebook computers; mobile phone software applications, downloadable; laser printers; tablet computers; telepresence robots; humanoid robots with artificial intelligence; computers; photo printers; ink-jet document printers; toner cartridges, unfilled, for printers and photocopiers; ink cartridges, unfilled, for printers and photocopiers; liquid crystal displays; LED displays; memory cards; USB flash drives; computer keyboards; mouse; mouse pads; smartwatches being watches with data processing capabilities; electronic pocket translators; operating system programs; touch screen pens; electronically encoded identity wristbands; smart glasses; cases adapted for computers; encoded identification bracelets, magnetic; processors for central processing units; graphics processor units (GPUs); computer programs, recorded; computer monitors; couplers being data processing equipment; digital to analogue converters; pedometers; apparatus to check franking; automated teller machines (ATMs); mechanisms for coin-operated apparatus; dictating machines; holograms; hemline markers; voting machines; face recognition apparatus; fingerprint identifier; photocopiers; bathroom scales; body fat scale for household purposes; electronic bathroom scales; scales; measures; digital signs; cell phones; wearable activity trackers; Global Positioning System (GPS) apparatus; network routers; smartphones; navigational instruments; electro-dynamic apparatus for the remote control of signals; sound locating instruments; satellite navigational apparatus; equipment for communication network; navigation apparatus for vehicles being on-board computers; selfie sticks for mobile phones; smartphones in the shape of a watch; intercoms; transmitters of electronic signals; wireless routers; transponders; communication modems; wireless local area network controllers; cell phone cases; protective films adapted for smartphones; waterproof cases for smart phones; monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; television displays; microphones; audio- and video-receivers; head-mounted video displays; web cameras; audio equipment; electronic audible devices with books; noise cancelling earphones; radio sets; rearview cameras for vehicles; camcorder waterproof cases; security surveillance robots; cabinets for loudspeakers; earphone; camcorders; electronic monitoring apparatus; television apparatus; ear pads for headphones; wireless earphones; headphones; electronic book readers; teaching apparatus with artificial intelligence; event data recorders; set-top boxes; wearable video display monitors; virtual reality headsets; multimedia projectors; cameras for photography; mini beam projectors; selfie sticks being hand-held monopods; measuring apparatus; air analysis apparatus; hygrometers; telemeters; tire pressure gauges; automatic indicators of low pressure in vehicle tyres; temperature indicators; connected bracelets in the nature of wearable measuring instruments; laboratory robots; teaching robots; audiovisual teaching apparatus; teaching apparatus; measuring devices, electric; inductors for electricity; simulators for the steering and control of vehicles; stereoscopes; materials for electricity mains being wires and cables; USB cables; adapter cables for headphones; semi-conductors; electronic chips; integrated circuits; magnetic materials and devices; amplifiers; conductors, electric; electric plugs; sensors; power adapters; switches, electric; alarm sensors; motion recognizing sensors; plugboards; optical sensors; temperature sensors; plugs, sockets and other contacts being electric connections; power adaptors; electric sockets; touch sensors; touchscreen sensors; adapter plugs; connections for electric lines; electricity switchboard of high or low voltage; plug connectors; video screens; remote control apparatus; remote controls for household purposes; optical fibers being light conducting filaments; electric installations for the remote control of industrial operations; lightning conductors; electrolysers; fire extinguishing apparatus; radiological apparatus for industrial purposes; protection devices for personal use against accidents; bicycle helmets; goggles; protective helmets; life saving apparatus and equipment; theft prevention installations, electric; biometric fingerprint door locks; electronic locks; electromagnetic locks; alarms; alarms for the detection of inflammable gases; smoke detectors; peepholes being magnifying lenses for doors; digital door locks; electric door bells; eyeglasses; sunglasses; 3D glasses; cyclists' glasses; USB chargers; battery charge devices; wireless chargers; battery chargers for mobile phones; batteries, electric; chargers for electric batteries; mobile power supply being rechargeable batteries; cell phone battery chargers for use in vehicles; animated cartoons; sports whistles; egg-candlers; dog whistles; decorative magnets; electrified fences; fridge magnets” in International Class 9.
“Surgical robots; vibromassage apparatus; electric esthetic massage apparatus for household purposes; thermometers for medical purposes; massage apparatus; massaging apparatus for personal use; sphygmomanometers; dental apparatus, electric, namely, intra-oral light systems; electric acupuncture instruments; soporific pillows for insomnia; sanitary masks for medical purposes; teething rings; contraceptives, non-chemical; robotic exoskeleton suits for medical purposes; orthopaedic articles; suture materials” in International Class 10.
“Lamps; lighting apparatus, namely, lighting installations; desk lamps; electric night lights; portable headlamps; ceiling lights; light bulbs; electric torches for lighting; lights for vehicles; germicidal lamps for purifying air; curling lamps; oil lamps; electric saucepans; pressure cookers being autoclaves, electric; tortilla presses, electric; gas burners; kettles, electric; electric toasters for household purposes; electrical rice cookers; electric rice cookers; electric kettles for household purposes; electromagnetic induction cookers; electric frying pans; air fryers; electric egg boilers; electric coffee machines; electric coffee brewers; microwave oven being kitchen appliances; soya milk making machines, electric; baking ovens for household purposes; electric cooking stoves for household purposes; electrically-heated mugs; lava rocks for use in barbecue grills; refrigerators; air purifiers; humidifiers for household purposes; air sterilisers; garment steamers; dehumidifiers for household purposes; electric fans; humidifiers; air filtering installations; extractor hoods for kitchens; air conditioners; clothes dryers; electric clothes dryers; electric fans being parts of air-conditioning apparatus; air reheaters; hair driers; water heaters; fog generators; automatic faucets; ornamental fountains; hydromassage bath apparatus; heating lamps for bath; hand drying apparatus for washrooms; sanitary apparatus and installations; water dispensers; electric water purifiers for household purposes; water filtering apparatus; apparatus for filtering drinking water; pocket warmers; radiators, electric; lighters; polymerisation installations” in International Class 11.
“Rolling stock for railways; automobiles; driverless cars being autonomous cars; push scooters being vehicles; bicycles; collapsible bicycles; self-balancing scooters; go-karts; electric bicycle; self balancing electric scooters; electrically powered scooters being land vehicles; pumps for bicycle tyres; bicycle pumps; aerial conveyors; pushchairs; fold-up pushchairs; wheelchairs; trolleys; rescue sleds; tyres for vehicle wheels; repair outfits for inner tubes; photography drones; air cushion vehicles; water vehicles; treads for vehicles being roller belts; roof-mounted luggage racks for vehicles; safety seats for children, for vehicles; electrical anti-theft installations for vehicles; electric vehicles; vehicles for locomotion by land, air, water or rail; remote control vehicles, other than toys” in International Class 12.
“Precious metals; boxes of precious metal; jewellery boxes; works of art of precious metal; necklaces being jewelry; figurines being statuettes of precious metal; jewellery; wristwatches; watch straps; alarm clocks” in International Class 14.
“Electronic musical instruments; pianos; guitars; violins; horns being musical instruments; musical instruments; bags specially adapted for holding musical instruments; musical boxes; music stands” in International Class 15.
“Paper; black paperboard for photography; laser printing paper; toilet paper; napkin paper; advertisement boards of paper or cardboard; stickers; printed calendars; writing paper pads; envelopes; figurines made from paper; printed publications; children's books incorporating electronic audible device; newsletters; pictures; bags of paper or plastics, for packaging; garbage bags of paper or of plastics; stapling presses being office requisites; office requisites, except furniture; stationery; Indian inks; stamps; pens; adhesive bands for stationery or household purposes; drawing instruments; drawing materials for blackboards; inking ribbons; printed instructional and teaching materials in the field of {specify subject matter}; tailors' chalk; architects' models” in International Class 16.
“Leather, unworked or semi-worked; bags in the nature of all-purpose sport bags; travelling trunks; school bags; gym bags; small backpacks; rucksacks; trunks being luggage; all-purpose sports bags; trimmings of leather for furniture; leather thongs for fastening or securing items; umbrellas; walking sticks; clothing for pets” in International Class 18.
“Containers for household or kitchen use; cooking pots; frying pans; deep fryers, non-electric; rice cooking pots, non-electric; cups; food preserving jars of glass; ceramics for household purposes; works of art made of crystal; temperature retaining cups; coffee filters not of paper being part of non-electric coffee makers; clothes racks, for drying; clothes drying hangers; toilet utensils; trash cans; drying racks for laundry; height adjustable ceiling-mounted drying racks for laundry; toothbrush holders; candle warmers, electric and non-electric; aromatic oil diffusers, other than reed diffusers, electric and non-electric; combs; brushes; material for brush-making; water apparatus for cleaning teeth and gums; toothbrushes, electric; heads for electric toothbrushes; manual toothbrushes; toothbrushes; toothpicks; cosmetic utensils in the nature of thread for eyebrow threading; thermally insulated containers for food; ice cube trays; cloth for washing floors; mops; cleaning instruments, hand-operated; lint removers, electric or non-electric; glass, unworked or semi-worked, except building glass; animal activated livestock waterers; animal-activated pet feeders; animal activated animal feeders; indoor terrariums being indoor insect vivariums; plug-in diffusers for mosquito repellents; ultrasonic mosquito repellers; ultrasonic pest repellers” in International Class 21.
“Viscose fabric; filtering materials of textile; filtering cloth; silk fabrics for printing patterns; felt; face towels of textile; bed linen; quilts; tablemats of textile; curtains of textile; curtains of textile or plastic; fitted toilet lid covers of fabric; marabouts being cloth; banners of textile or plastic; shrouds; household linen” in International Class 24.
“Games; apparatus for games; electronic games for the teaching of children; video game interactive control floor pads or mats; water slides; building blocks, large size; smart electronic toy vehicles; toy robots; toy models; smart plush toys; drones for toys being dog toys; dog toys; toy vehicles; baby gyms; battery operated toys; play sets for action figures; toy scooters; toy building blocks; remote-controlled toy vehicles; cube-type puzzles; balls for games; stationary exercise bicycles; exercise steppers; running machines; body-training apparatus; bows for archery; machines for physical exercises, namely, {indicate type of equipment, e.g., exercise bands, training bars, rowing machines}; jump ropes; skateboards; hunting game calls; play swimming pools; protective paddings being parts of sports suits; gloves for games; in-line roller skates; ornaments for Christmas trees, except lights, candles and confectionery; rods for fishing; twirling batons; camouflage screens for hunting purposes; scratch cards for playing lottery games; hand grips for rackets; grip tapes for golf clubs” in International Class 28.
“Advertising services; pay per click advertising; online advertising on a computer network; presentation of goods on communication media, for retail purposes; providing business information via a web site; commercial intermediation services; commercial administration of the licensing of the goods and services of others; commercial information and advice for consumers in the choice of products and services; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; procurement services for others being purchasing goods and services for other businesses; import-export agency services; personnel recruitment; search engine optimization for sales promotion; conducting data searches in computer files for others; compiling indexes of information for commercial or advertising purposes; sponsorship search; rental of vending machines; rental of sales stands; retail store services for pharmaceutical, veterinary and sanitary preparations and medical supplies” in International Class 35.
“Providing information relating to insurance; financial management; e-wallet payment services; jewellery appraisal; real estate agency services; financial customs brokerage services; surety services; charitable fund raising; fiduciary, namely, fiduciary representative services; lending against security” in International Class 36.
“Providing construction information; building of fair stalls and shops; quarrying services; upholstering; heating equipment installation and repair; installation, maintenance and repair of computer hardware; interference suppression in electrical apparatus; medical apparatus installation and repair; motor vehicle maintenance and repair; airplane maintenance and repair; shipbuilding; photographic apparatus repair; clock and watch repair; installation, changing, replacement and repair of locks; re-tinning; repair of rubber tires; furniture restoration; cleaning of clothing; sterilization of medical instruments; elevator installation and repair; burglar alarm installation and repair; telephone repair; pump repair and maintenance; parasol repair; artificial snow-making services; restoration of works of art; tuning of musical instruments; rental of drainage pumps; swimming-pool maintenance; repair of power lines; hand tool repair; installation and repair of entertainment and sports equipments; rental of dish washing machines; repair of binoculars; repair of toys or dolls; repair of game machines and apparatus; repair and maintenance of smartphones; telephone installation and repair; cell phone battery charging services; rental of carpet cleaning machines; maintenance and repair of mobile phones; cleaning services for extractor hoods; maintenance and repair of telescopes” in International Class 37.
“News agency services for electronic transmission; wireless broadcasting; electronic message sending; providing telecommunication channels for teleshopping services; computer aided transmission of messages and images; providing internet chatrooms; providing user access to global computer networks; providing online forums for transmission of messages among computer users; video-on-demand transmission; teleconferencing services; videoconferencing services; communications by computer terminals; transmission of digital files; providing access to databases” in International Class 38.
“Transportation logistics; freighting; unloading cargo; packaging of goods; piloting; truck hauling; vehicle breakdown towing services; freighting being shipping of goods for others; car transport; replenishment of vending machines; air transport; car rental; car sharing services; horse rental for transportation purposes; storage of goods for others; rental of diving suits; distribution of energy; operating canal locks; courier services being messages or merchandise delivery for others; parcel delivery; delivery of goods; travel ticket reservation services; transport by pipeline; rental of wheelchairs; launching of satellites for others; bottling services; push-chair rental” in International Class 39.
“Religious instruction services; correspondence courses; arranging and conducting of seminars; organization of sporting competitions; lending library services; providing on-line electronic publications, not downloadable; on-line publication of electronic books and journals; distribution of video tapes; providing online videos, not downloadable; production of radio and television programmes; video production; entertainment services, namely, {specify exact services intended in International Class 41 by their common commercial names}; entertainer services, namely, {specify exact services intended in International Class 41 by their common commercial names}; game services provided on-line from a computer network; health club services being health and fitness training; toy rental; games equipment rental; conducting guided tours; art exhibitions; animal training; modelling for artists; organization of lotteries; rental of indoor aquaria; operating of lotteries” in International Class 41.
“Research and development of new products for others; technological research; quality system certification; product quality testing services; surveying; meteorological information; material testing; packaging design; design of telephones; design of interior decor; dress designing; software design and development; research and development of computer software; updating and maintenance of computer software; cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; platform as a service (PaaS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}; software as a service (SaaS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; consultancy in the design and development of computer hardware; providing information on computer technology and programming via a web site; electronic data storage; authenticating works of art; graphic arts design; cloud seeding; handwriting analysis being graphology; cartography services; rental of meters for the recording of energy consumption” in International Class 42.
“Monitoring of burglar and security alarms; lifeguard services; monitoring of security alarm systems; chaperoning; personal wardrobe styling consultancy; funerary undertaking; opening of security locks; online social networking services; fire-fighting; organization of religious meetings; adoption agency services; lost property return; rental of safes; genealogical research; planning and arranging of wedding ceremonies; releasing doves for special occasions; dating services; leasing of internet domain names; intellectual property consultancy” in International Class 45.
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.
To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.
The following English translation is suggested:
The English translation of “XIAMOI” in the mark is “MILLET” or “WHEAT”.
TMEP §809.03. See attached translation evidence.
DESCRIPTION OF THE MARK REQUIRED
Applicant must submit a description of the mark because one was not included in the application. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). In this case, the drawing of the mark is not in standard characters.
The following description is suggested, if accurate:
The mark consists of the stylized wording XIAMOI.
Please note the following additional information.
INFORMATION FOR PRO SE FOREIGN APPLICANTS: U.S. COUNSEL RULE
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).
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 China. 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.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE