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: 6/4/2012

 

 

Introduction

 

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 for Conflicting 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).

 

 

Classification/Identification of Goods/Services

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  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 wording “HDMI” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 3268924.  An applicant may not use a registered mark owned by another party in the identification.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of goods to delete the wording “HDMI” and substitute the common commercial or generic name of the goods.

 

The following wordings are indefinite and must be further clarified to indicate the specific type of goods:  cables, plugs, audio cassette adaptors.

 

Applicant has classified the goods “CD/DVD lens cleaners” in Class 009; however, if these are cleaning preparations, they are classified in 003 with other non-medicated cleaning preparations.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

The wording “gaming systems” is indefinite and must be clarified, because all game apparatus are in Class 028 but gaming software are in Class 009.  As currently worded, it is unclear which the goods are referring to and whether they are sold separately or sold as a unit.

 

Applicant has classified the goods “gaming controllers” in Class 009; however, they are classified in 028.

 

Applicant may adopt the following identification, if accurate: 

 

Class 003         Cleaning preparations for cleaning CD and DVD lenses

 

Class 009         Battery chargers; cables, electric; high definition multimedia interface cables; universal power adaptors, USB cables; electrical adaptor plugs; power supply adaptors for use with audio cassettes; USB chargers; television antennas; car televisions; audio speakers; public address (PA) and sound system accessories, namely, audio speakers; subwoofers; tweeters; personal stereos; audio equipment for cars, namely, stereos; radios; car radios; cassette players; CD players; AM/FM car radio; radios incorporating clocks; DVD players; analog television with DVD player; FM radio transmitters; computer gaming software; headphones; earphones; microphones; wireless microphones; portable audio devices, namely, MP3 players, MP4 players, personal radios, portable stereos; portable televisions; portable DVD players; power inverters; remote controls for televisions; RF modulators; electronic PC tablets; telephones; cellular telephones; landline telephones; televisions; digital televisions; LED televisions

 

Class 028         Gaming system, namely, {specify, e.g. computer game consoles for use with an external display screen or monitor, electronic games other than those adapted for use with television receivers only}; game controllers for computer games

 

 

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.

 

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.

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 003, 009 and 028.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

 

Multi-Class Application Requirements

 

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

 

(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.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

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).

 

 

Significance of Wording

 

The examining attorney requires information about the goods/services and/or the mark to determine whether all or part of the mark is merely descriptive as applied to the goods and/or services.  TMEP §814.  Applicant must specify whether the wording “QFX” has any significance as an acronym, in the electronics industry, or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).

 

Trademark Rule 2.61(b) states “[t]he examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Page, 51 USPQ2d 1660 (TTAB 1999)(failure to comply with request for information constitutes grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

 

 

/W. Wendy Jun/

Trademark Examining Attorney

Law Office 103

Phone - 571-272-8810

Fax No. 571-273-8810

wendy.jun@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 6/4/2012 FOR

SERIAL NO. 85549597

 

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 6/4/2012 (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.