To: | ASUSTEK COMPUTER INCORPORATION (tm@kimwinston.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85892190 - ASUS - 2022.0025 |
Sent: | 4/2/2014 9:56:13 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85892190
MARK: ASUS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: ASUSTEK COMPUTER INCORPORATION
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 4/2/2014
This Priority Action is in response to the applicant’s filing of a Petition to Amend Basis Post-Publication on March 24, 2014. In the Petition, the applicant proposed that the filing basis be amended to Section 44(e) and that the Section 1(b) filing basis be deleted. The Section 1(b) filing basis has been deleted. The examining attorney reviewed the proposed foreign registrations, but as explained below, an amendment to the Identification of Goods, or the submission of additional foreign registrations is required before the application can be amended to Section 44(e) for publication.
ISSUES APPLICANT MUST ADDRESS: On April 1, 2014, the trademark examining attorney and Laura Winston discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
SUMMARY OF ISSUES that applicant must address:
IDENTIFICATION OF GOODS EXCEEDS SCOPE OF FOREIGN REGISTRATIONS – DELETION OF GOODS OR SUBMISSION OF ADDITIONAL FOREIGN REGISTRATIONS REQUIRED
In the conversation between the examining attorney and attorney of record the options of submitting either additional foreign registrations or deleting the goods identified below were discussed as possible outcomes to overcome this refusal.
The following wording in the identification of goods identified below in strikethrough font in the U.S. application is unacceptable because it exceeds the scope of the goods in the foreign application or registration. The wording identified in bold and underlined font is acceptable as written.
International Class 9: Computers; Tablet computer; Computer hardware; Computer peripheral devices; Interfaces for
computers; Power wires; wireless high definition multimedia interface converters; wireless high-definition multimedia interface transmitters and receivers for audio, data,
video or image transmission; Electric cables and wires; Electric connectors; set-top boxes; Tablet computer connection cables; Tablet computer serial ports; Tablet
computer parallel ports; Electronic card readers; USB hubs; Blank USB flash drives; Carrying cases and bags for laptop computers; Cell phone straps; Carrying cases and bags for tablet
computer; Earphones; Head-clip cell phone holders; Protective covers and cases for cell phones; Cabinets for loudspeakers; Personal stereos; Audio speakers;
Televisions; Protective covers and cases for personal digital assistants (PDA); Carrying cases and bags for personal digital assistants (PDA); Eyeglasses; theatre glasses; Optical glasses;
Portable telephones; Electronic communications systems comprised of computer hardware and software for the transmission of data between two points; Satellite navigational system, namely, a global
positioning system (GPS); Loudspeakers; Blank hard computer discs; Data processing equipment, namely, scanners; Carrying cases and bags for notebook computers;
Computer mice; Mouse pads (computer peripheral); Covers for photographic apparatus; Cases for photographic apparatus; Camera straps; Electronic pens; computer stylus; Silicon
chips; Light emitting diodes (LEDs); Capacitors; Electric resistances; Electrical inductors; Transformers; Diodes; Uninterruptible electrical power supplies; Batteries; Wrist
rests for use with computers; computer keyboard; computer speakers; Disk drives for computers; Flash memory card; Headphone
International Class 18: Backpacks; Bags for sports; Handbags; Trunks,
namely, luggage; Pocket wallets; Briefcases; Name card cases; Bags, envelopes, and pouches for packaging of leather; Reusable shopping bags; Umbrellas; Leather,
unworked or semi-worked
See 37 C.F.R. §2.32(a)(6); TMEP §1012.
Therefore, applicant must satisfy one of the following:
(1) Amend the identification of goods in the U.S. application to correspond to the goods identified in the foreign application or 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 goods beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods and/or services.
As discussed, the applicant may also submit additional foreign registrations for review and consideration.
See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).
An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b); TMEP §806.02. If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a). If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).
Although multiple-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods and/or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
/Catherine L. Tarcu/
Trademark Examining Attorney
Law Office 105
(571) 272-6120
Catherine.Tarcu@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.