UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/19/2015

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

On October 14, 2015, applicant petitioned to amend the basis to a Section 44(e) basis.  Applicant requested that the application be amended to include a 44(e) foreign registration basis.  Applicant indicated that applicant wished to proceed solely based on the 44(e) basis and the 1(b) intent to use basis should be deleted from the application if, and only if, the foreign registration is accepted per se.  Due to the fact that the application is unable to proceed forward with a Section 44(e) basis only, the Section 1(b) basis has not been deleted, and the following issues with respect to the Section 44(e) basis are noted below.

 

FOREIGN REGISTRATION

 

Applicant submitted a photocopy of an entry in the intellectual property office’s gazette or a printout from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.  However, the submitted document was not accompanied by a certification from the issuing intellectual property office.  A photocopy of an intellectual property office’s publication or a printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office.  TMEP §1004.01. 

 

An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.

 

Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION

 

Particular wording in the identification in the U.S. application is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration upon which the Trademark Act Section 44 basis is based.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

An acceptable identification of goods and/or services is required in a U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.  For the goods and/or services in a U.S. application based on Trademark Act Section 44, an applicant is required to list goods and/or services that do not exceed the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Additionally, an applicant may only amend an identification in a U.S. application to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

The U.S. application identifies the particular bolded goods as follows which are beyond the scope of those identified in the foreign registration, namely:  Audio equipment for vehicles, namely, loud speakers for automotive audio systems; Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Audio equipment for vehicles, namely, subwoofers; Batteries and battery chargers; Cables, electric; Capacitors; Converters; DVD players; Headphones; Power adapters; Radio receivers.

 

However, the foreign registration identifies the goods and/or services as follows:  Apparatus for recoding, transmission and reproduction of sound or images, including audio equipment, including for vehicles, parts and fittings for the aforesaid goods, namely, microphones, headphones, batteries, equalizers, amplifiers, loudspeakers and analogue and digital  multimeters, power supply devices, regulators, resistances, potentiometers, condensers, transformers, LEDs and signalling device, switching and reading devices, temperature compensation devices, revolution counters, plugs, buses, couplings, adaptors, commutators, frequency separation filters and fittings therefor, namely multiple sockets and socket connectors, hook-up wire, hook-up cables, cables, changeover and module PCBs, power supply, module and disk drive housings, protective covers and battery holders, electronic components and modules (included in class 9), car radios and accessories therefor, namely, regulators, switches aerials and guards.

 

The goods “Batteries and battery chargers; Cables, electric; Capacitors; Converters; DVD players; Headphones; Power adapters; Radio receivers” in the U.S. application exceed the scope of goods in the foreign registration. 

 

In particular, the goods capacitors, converters, DVD players and radio receivers are not listed per se in the foreign registration nor does it appear that any wording in the foreign registration is broad enough to include these goods. 

 

With respect to the goods, batteries and battery chargers, cables, electric, headphones and power adapters, while these goods are either listed in the identification in the foreign registration or are broad enough to be encompassed by wording in the foreign registration, these goods are listed as individual goods and not in the context of apparatus for recoding, transmission and reproduction of sound or images, including audio equipment, including for vehicles.  Thus, these goods as currently identified are broader than those in the foreign registration despite being referenced.

 

Therefore, applicant may respond by either:

 

(1)  amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)  deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services should remain in the U.S. application.

 

Applicant may wish to contact the examining attorney if the applicant has any questions regarding any possible amendments to the identification.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

Applicant may adopt the following identification of goods for a Section 44(e) basis only, if accurate:

 

Audio equipment for vehicles, namely, loud speakers for automotive audio systems; Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Audio equipment for vehicles, namely, subwoofers; Apparatus for recording, transmission and reproduction of sound or images, including audio equipment, including for vehicles, parts and fittings for the aforesaid goods, namely, batteries and battery chargers, electric cables, headphones and power adapters, International Class 9.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Brendan McCauley/

Brendan McCauley

Law Office 114

571-272-9459

Brendan.McCauley@uspto.gov

 

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/19/2015 FOR U.S. APPLICATION SERIAL NO. 85217933

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/19/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.