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: 3/25/2014

 

Upon further consideration of the application, the following has been determined:

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

Applicant is applying to register the mark SURROND VISION for use with “Home theater and entertainment systems comprised of projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; sound systems comprised of sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; projection screens; electronics and related accessories, namely, projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; computer software for processing video images and sound and projecting video images and sound, and hardware;” “Home video game consoles used with an external display screen, namely, televisions and theater system display screens and monitors, and arcade-based video game consoles and parts and fittings therefor” and “Cinema theater facilities; cinema theaters; providing facilities for movies; movie theaters; movie showing; arranging, conducting and organizing exhibition of movies and shows for entertainment purposes.” 

 

As the attached evidence reflects, the term “SURROUND VISION” refers to a system that enables viewers to use handhelds to follow objects outside the TV screen.  Specifically,
“Surround Vision is intended to work with standard, Internet-connected handheld devices. If a viewer wanted to see what was happening off the left edge of the television screen, she could simply point her cell phone in that direction, and an image would pop up on its screen. The technology could also allow a guest at a Super Bowl party, for instance, to consult several different camera angles on a particular play, without affecting what the other guests see on the TV screen.”  See attached Internet evidence regarding “surround vision.”  Here, the terms at issue are merely descriptive because they immediately convey to prospective consumers the very character of applicant s goods and services, this being that the goods and services.  Thus, the proposed mark is merely descriptive of applicant’s goods and services and is refused pursuant to Trademark Action Section 2(e)(1), 15 U.S.C. §1052(e)(1). 

 

Clarification of the Identification of Goods in Classes 009 and 028

 

The examining attorney required the applicant to clarify and amend the goods in the application and the applicant responded with an amended Identification of Goods.  The proposed amendments with respect to the identification of goods cannot be accepted because some of the wording remains indefinite and requires further clarification. 

 

Class 009

 

The proposed amended identification of goods now reads:

 

Home theater and entertainment systems comprised of projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; sound systems comprised of sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; projection screens; electronics and related accessories, namely, projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; computer software for processing video images and sound and projecting video images and sound, and hardware

 

The term “hardware” requires clarification by either amending the wording to “computer hardware” or indicating specific goods. 

 

Applicant may consider the following:

 

Home theater and entertainment systems comprised of projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; sound systems comprised of sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; projection screens; electronics and related accessories, namely, projection screens, video monitors, video projectors, sound projectors and amplifiers, computer CPUs, audio amplifiers, audio speakers; computer hardware and software for processing video images and sound and projecting video images and sound

 

Class 028

 

The proposed amended identification of goods now reads:

 

Home video game consoles used with an external display screen, namely, televisions and theater system display screens or monitors, and arcade-based video game consoles and parts and fittings therefor

 

The wording “parts and fittings therefor” includes goods found in Class 009 such as DVD drives, hard drives, power supplies, etc.  Therefore, applicant must indicate specific goods with respect to “parts and fittings.”

 

The following is suggested:

 

Home video game consoles used with an external display screen, namely, televisions and theater system display screens or monitors, and arcade-based video game consoles and parts and fittings therefor, namely {SPECIFY, E.G., face plates, bags and fitted plastic films known as skins specially adapted for video game consoles}

 

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 services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

/CarynGlasser/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571)-270-2517

caryn.glasser@usp

 

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 3/25/2014 FOR U.S. APPLICATION SERIAL NO. 86029226

 

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 3/25/2014 (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.