UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY 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: 7/10/2014

 

 

This Priority Action is in response to the applicant’s communication filed on June 16, 2014. 

 

ISSUES APPLICANT MUST ADDRESS:  On July 9, 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 - PARTIAL

 

IDENTIFICATION OF GOODS EXCEEDS SCOPE OF FOREIGN REGISTRATIONS – DELETION OF GOODS OR SUBMISSION OF ADDITIONAL FOREIGN REGISTRATIONS REQUIRED – PARTIAL

This requirement applies to only the goods identified below in International Class 9.  The applicant’s International Class 18 Identification of Goods is acceptable as written.

The following goods in the Identification of Goods are unacceptable because they exceed the scope of the goods in the foreign registrations submitted for consideration:

Cabinets for loudspeakers

Eyeglasses

Theatre glasses

Optical glasses

 

See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Applicant may adopt the following identification if accurate:

International Class 9:  Computers; Tablet computer; Computer hardware, namely, motherboards, interface cards, network cards, data processors, computer memories, disk arrays machines, terminals; Computer peripheral devices, namely, modems, cable modems, printers, DVD burners, routers; Interfaces for computers; Power wires; wireless high definition multimedia interface converters; wireless high-definition multimedia interface transmitters for audio, data, video or image transmission: wireless high-definition multimedia receivers for video transmission; Electric cables and wires; Electric connectors; Wireless set-top boxes; Tablet computer connection cables; Tablet computer serial ports; Tablet computer parallel ports; 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; Loudspeakers; Blank hard computer discs; Data processing equipment, namely, scanners; Carrying cases and bags for notebook computers; Computer mice; computer stylus; Transformers; Uninterruptible electrical power supplies; Batteries; computer keyboard; computer speakers; Disk drives for computers; Flash memory card; Headphones.

 

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.

 

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

PARTIAL ABANDONMENT ADVISORY

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 9 will be deleted from the application: 

 

Cabinets for loudspeakers

Eyeglasses

Theatre glasses

Optical glasses

 

The application will then proceed with the following goods in International Class(es) 9 and 18 only:   

 

International Class 9:  Computers; Tablet computer; Computer hardware, namely, motherboards, interface cards, network cards, data processors, computer memories, disk arrays machines, terminals; Computer peripheral devices, namely, modems, cable modems, printers, DVD burners, routers; Interfaces for computers; Power wires; wireless high definition multimedia interface converters; wireless high-definition multimedia interface transmitters for audio, data, video or image transmission: wireless high-definition multimedia receivers for video transmission; Electric cables and wires; Electric connectors; Wireless set-top boxes; Tablet computer connection cables; Tablet computer serial ports; Tablet computer parallel ports; 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; Personal stereos; Audio speakers; Televisions; Protective covers and cases for personal digital assistants (PDA); Carrying cases and bags for personal digital assistants (PDA); Portable telephones; Loudspeakers; Blank hard computer discs; Data processing equipment, namely, scanners; Carrying cases and bags for notebook computers; Computer mice; computer stylus; Transformers; Uninterruptible electrical power supplies; Batteries; computer keyboard; computer speakers; Disk drives for computers; Flash memory card; Headphones.

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, semi-worked.

 

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

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. §2.191; 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.

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/10/2014 FOR U.S. APPLICATION SERIAL NO. 85892190

 

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 7/10/2014 (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.