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: 12/28/2011

 

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 OFFICE’S DATABASE OF MARKS

 

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

 

In any event, applicant must address the following requirements. 

 

CLAIM OF OWNERSHIP OF REGISTRATIONS

 

If applicant owns U.S. Registration Nos. 0520350, 1410235, 3256975, and others, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 0520350, 1410235, 3256975, and others.

 

IDENTIFICATION OF GOODS

 

Applicant submitted the following identification with the application.

International Class 009: Burglar and security alarms; fire, smoke and gas alarms; fire, smoke, gas, intrusion and motion detectors; switches, relays, magnetic contacts; glass break detectors; sensors, switches, scanners, generators, transmitters, receivers and processors of electrical signals; electric transmission line security and fault monitors; battery chargers; control panels, booster panels, and electrical controls for detectors and alarms; controllers; remote controls; remote transmitters and receivers; automatic lighting, appliance, and environmental controls; video surveillance equipment and parts thereof; namely cameras, digital cameras, network cameras and web cameras, combination video recorders and video players, network video products namely network video servers, network video recorders, network video decoders, network video encoders; IP-cameras, namely cameras capable of transmitting data and video via Internet Protocols; audio recorders, video recorders, video monitors, video management systems, video switching systems, keyboards; camera positioning units, namely pan and tilt devices for cameras to allow for positioning by a remote operator; camera enclosures, housings, assemblies, and mounts; camera lenses, namely auto iris lenses, optical zoom lenses, digital zoom lenses; camera displays; audio players; electronic visitor management system comprising computer hardware, scanner, camera, printer and software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, and identifies who is allowed access to a building; access control security systems comprising computer hardware and software for use in controlling access to facilities and areas by control of gates, doors and windows; keypads; radio frequency proximity readers for electronic access control systems; weigand readers; biometric readers; radio frequency tags; electronic door openers; electronic card readers; swipe readers; computer software for use in video surveillance or close circuit television systems namely cameras and sensors which capture, receive, store, manage and/or distribute data for the purpose of analysis, reporting and retrieval; computer software for use in sending alarm notification to on-site and remote management facilities; computer software for the control of alarms and security, fire, and gas detection systems; computer management software for use in security and surveillance systems; computer hardware, communications hardware and computer software, for management, automation and monitoring of electronic sensors of physical activity, physical premises security systems, video cameras, environmental sensors, HVAC systems, home entertainment devices and home electronic devices; electronic visitor management software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, identifies who is allowed access to a building; audio amplifiers, receivers, tuners, equalizers, audio compressors, audio mixing consoles; speakers; volume controls; public address annunciators; attenuators; bells, gongs, warning lights and sirens; sound beacons and lights for use as a directional guide along stairways and escape routes in fire and emergency situations.

 

The above bolded and italicized wording in the identification of goods must be clarified because it is indefinite and/or too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

The word “system” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts or components of the system.  See TMEP §§1401.02(a), 1402.01.  See the suggested wording below for further guidance regarding the information needed. 

 

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, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Generally, commas should be used (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.”  TMEP §1402.01(a).  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class.  Id.

 

For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class.  Id.  However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable:  “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.”  Id.

 

Additionally, the use of the wording “or” or “and/or” is generally unacceptable because the specific good identified is unclear.

 

Applicant may adopt the following formulation for use in drafting an acceptable amended identification, if accurate:   

 

International Class 007: Electric generators of electrical signals;

 

International Class 009: Burglar and security alarms; fire, smoke and gas detecting alarms; fire, smoke, and gas detectors; intrusion detectors in the nature of {indicate, e.g. anti-intrusion alarms}; electronic motion detectors; {indicate type, e.g. electric} switches, {indicate type, e.g. electric} relays, magnetic contacts; glass break detectors in the nature of electric sensors; sensors, switches, scanners, transmitters, {indicate nature with more specificity, e.g. audio-video} receivers and {indicate nature with more specificity, e.g. data} processors of electrical signals; electric transmission line security and fault monitors; battery chargers; {indicate type, e.g. electric} control panels, {indicate common commercial name for “booster panels”}, and electrical controls for detectors and alarms; {indicate type, e.g. electrical} controllers; remote controls for {indicate specific devices}; remote control transmitters for radio-controlled devices and radio receivers for remote controls; automatic lighting, appliance, and environmental {indicate nature, e.g. remote} controls; video surveillance {clarify “equipment,” e.g. installations} and parts thereof, namely, cameras, digital cameras, network cameras and web cameras, combination video recorders and video players, and network video products in the nature of network video computer servers, network video recorders, network video decoders, network video encoders; IP-cameras, namely cameras capable of transmitting data and video via Internet Protocols; audio recorders, video recorders, video monitors, video management systems comprised of {indicate components}, video switching systems comprised of {indicate components, e.g. electronic switchers for video signals},keyboards; {clarify nature of “camera positioning units, namely pan and tilt devices for cameras to allow for positioning by a remote operator,” e.g. camera positioning units especially adapted for fitting cameras in the nature of pan and tilt devices for cameras to allow for positioning by a remote operator}; component parts of cameras, namely, camera enclosures, housings, assemblies, and mounts; camera lenses, namely auto iris lenses, optical zoom lenses, digital zoom lenses; camera displays being video screens; {indicate type of “audio players,” e.g. audio cassette players, digital audio players}; electronic visitor management system comprising computer hardware, scanner, camera, printer and software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, and identifies who is allowed access to a building; access control security systems comprising computer hardware and software for use in controlling access to facilities and areas by control of gates, doors and windows; computer keypads; radio frequency proximity readers being readers radio frequency identification credentials for electronic access control systems; {indicate common commercial name for “weigand readers”}; biometric readers in the nature of {indicate}; radio frequency identification tags; electronic door openers; electronic card readers; swipe readers in the nature of {indicate, e.g. magnetic encoded card readers}; computer software for use in video surveillance or close circuit television systems namely cameras and sensors which capture, receive, store, manage and distribute data for the purpose of analysis, reporting and retrieval; computer software for use in sending alarm notification to on-site and remote management facilities; computer software for the control of alarms and security, fire, and gas detection systems; computer management software for use in security and surveillance systems; computer hardware, communications hardware and computer software, for management, automation and monitoring of electronic sensors of physical activity, physical premises security systems, video cameras, environmental sensors, HVAC systems, home entertainment devices and home electronic devices; electronic visitor management software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, identifies who is allowed access to a building; audio amplifiers, receivers, tuners, equalizers, audio compressors, audio mixing consoles; audio speakers; electrical volume controls; public address {clarify “annunciators,” e.g. instruments in the nature of audio speakers}; attenuators; warning devices, namely, bells, gongs, electric warning lights and sirens; emergency position-indicating sound radio beacons and safety  beacon lights for use as a directional guide along stairways and escape routes in fire and emergency situations;

 

International Class 015: Gongs.

 

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

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

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 use in commerce:

 

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

 

(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”); and

 

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)        DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.;

 

(c)        STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)        VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class 009 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

 

/Laura A. Hammel/

Trademark Examining Attorney

Law Office 116

(571)272-8260

laura.hammel@uspto.gov (informal queries only)

 

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 12/28/2011 FOR

SERIAL NO. 85439855

 

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 12/28/2011 (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.