UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FINAL 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: 5/23/2011

 

This application was filed with the Office on January 28, 2011.  The undersigned trademark examining attorney issued an initial Office action on May 2, 2011, raising the following requirements:

 

(1)   The application was unsigned; a signed verification of the application was required.

(2)   An acceptable copy of the foreign registration certificate was required to perfect the §44(e) basis.

(3)   Acceptable classification and identification of the goods and services was required.

 

Applicant filed a timely response on May 11, 2011, adding the required signed verification of the application.  Applicant did not address or comply with the remaining requirements, which are now made final exactly as set forth in the initial Office action.  The requirements are restated herein.

 

 

Foreign Registration Certificate Required

 

Applicant submitted 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).

 

 

Classification and Identification of Goods and Services

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

For those goods and/or services properly classified in more than one international class, applicant needs to either (1) identify the goods/services acceptably, add any appropriate international class(es) to the application, and classify the goods/services therein, or (2) delete the goods/services from the application.  See 37 C.F.R. §§6.1, 2.86; TMEP §§1403 et seq.

 

In particular, the wording “technical consultation in the field of design … of lighting apparatus, lighting fixtures and lighting systems,” which applicant has proposed in Class 37, is acceptable but misclassified; the services are properly classified in Class 42.

 

Next, the identification of goods for Class 11 is broader than the scope of the identification in the foreign registration as listed on the evidence of record.  See 37 C.F.R. §2.32(a)(6).  In the foreign registration printout, applicant’s Class 11 goods are limited to lighting fixtures that are fluorescent, high-intensity discharge, LED, and incandescent.

 

Therefore, applicant must either:

 

1)      Amend the identification of goods for Class 11 in the U.S. application to correspond to the goods identified in the foreign registration, ensuring that all goods beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

2)      Delete the Trademark Act Section 44 basis for the Class 11 goods beyond the scope of the foreign application or registration and rely solely on the §1 basis for those goods. 

 

See 15 U.S.C. §§1051, 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). 

 

Finally, all the services recited in Class 37 are outside the scope of the services listed in the foreign registration evidence of record.  The U.S. application lists only services that are “technical consultation” services in the field of lighting, while the services in the foreign registration evidence are the design, manufacture and distribution of certain lighting and electrical products.  Applicant is therefore required to delete the Trademark Act §44 basis for its services and rely solely on the §1 basis.  TMEP §§806.02, 806.04, 1402.01(b).

 

Applicant may adopt the following classification and identification of goods and services, if accurate: 

 

Class 11:    (Based on intent to use) (Based on foreign registration) Fluorescent, high-intensity discharge, LED, and incandescent lighting fixtures and electrical lighting fixtures

 

Class 37:    (Based on intent to use) Technical consultation in the field of installation of lighting apparatus, lighting fixtures and lighting systems

 

Class 42:    (Based on intent to use) Technical consultation in the field of design of lighting apparatus, lighting fixtures and lighting systems

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

 

Requirements for Multiple-Class Applications

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

1)      LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

2)      PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

Abandonment Advisory

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)   Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)   Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

Questions

 

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 cannot 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. §2.191; TMEP §§709.04-.05. 

 

Further, although the trademark examining attorney may provide additional explanation pertaining to the issues addressed 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.

 

 

/Rebecca Miles Eisinger/

Trademark Examining Attorney

Law Office 102

(571) 272-8845

rebecca.eisinger@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 5/23/2011 FOR

SERIAL NO. 85228864

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 5/23/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.