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: 3/21/2014

 

 

 

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 RESULTS

 

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).

 

SUMMARY OF ISSUES that applicant must address:

 

• IDENTIFICATION OF GOODS

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite because some of the wording is too broad and could include goods in multiple international classes and some of the wording is indefinite and requires clarification as specifically discussed below.  See TMEP §§1402.01, 1402.03. 

 

First, the identification of goods does not utilize any punctuation to distinguish between the clauses of the identification.  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.

 

Second, the wording “car stickers” appears to be in the nature of bumper stickers – which are properly classified in Class 16; applicant may substitute the wording “car bumper stickers” in Class 16, if accurate.  Further, the wording “LED light” is indefinite because the nature of these lights is not clear.  Lights which are not for safety purposes are properly classified in Class 11, applicant must specify the type of light and reclassify this to Class 11, if accurate.  Further, the wording “monitor+rearview camera” is indefinite – it is thought that the applicant provides vehicle safety equipment in the nature of an LCD monitor and rearview camera, if so, applicant must so specify.  Further, the wording “balloon inflator pump” is indefinite – pumps which are electric in nature are properly classified in Class 7 – thus if this is an electric pump applicant must so specify and reclassify it into Class 7.  Further, the wording “mobile headset” is indefinite – applicant must specify the device for which the headset will be used. 

 

Further, the wording “mobile power” appears to be a duplicate entry.  Applicant may either (1) modify one of these two identical descriptions of goods such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §707.02.

 

Additionally, the wording “mobile power” on its own is indefinite – if this is in the nature of a mobile power supply, applicant must so specify and the goods would be properly classified in Class 9.  However, if this is a mobile electric power generator, the applicant must so specify and the goods would properly be classified in Class 7.  The wording “bank” is indefinite – metal coin banks are properly classified in Class 6, while piggy banks and non-metal coin banks are properly classified in Class 21.  The wording “phone lens series” is indefinite because the nature of these goods is not clear.  It is thought that the applicant provides a camera lens for use on a mobile phone.  If so, the applicant must so specify.  The wording “digital keyless doorlocks” is indefinite because the nature of these goods is unclear – it is thought that these are in the nature of electric locks – if so, the applicant must so specify.  Further, the wording “LED candle light” is properly classified in Class 11.  The wording “led solar light” is indefinite because the nature of these goods is not clear – it is thought from the specimen that the applicant is providing solar-powered LED string lights – if so the applicant must so specify and these goods should be classified in Class 11.  Further, the wording “solar water pump” is indefinite because the nature and intended use of the pump is not clear – if this is in the nature of a solar-powered electric water pump it would be properly classified in Class 7 and the intended use of the pumps must be specified – applicant may substitute “solar-powered electric water pumps for swimming pools” if accurate.  Further the wording “temperature controller” is indefinite – applicant must specify the use or purpose of the controllers for instance, applicant could state “for controlling household temperatures”, if accurate.  The wording “USB wire camera” is indefinite – it is thought that these are cameras mounted on USB cables – if so the applicant may so specify and these goods would be properly classified in Class 9.  However, if these are more in the nature of endoscopy cameras, these goods would be properly classified in Class 10 as a medical device – applicant could specify the wording “endoscopy camera, namely, USB wire camera” in Class 10, if accurate.  The wording “tablet” is indefinite – a writing tablet is properly classified in Class 16, but a PC tablet or a tablet computer is properly classified in Class 9, thus applicant must clarify this wording.  Further, the wording “Leather Case with Keyboard for tablet” is indefinite – it is thought that these are leather cases with an integrated keyboard which are specifically adapted for table computers – if so, the applicant must so specify – leather cases not adapted for a specific purpose are properly classified in Class 18 thus this wording is indefinite.  Further the wording “kitchen tools” is indefinite.  It is thought from the specimen that the applicant is providing either a hand-operated or an electric food chopper – applicant may specify “kitchen tools, namely, electric food choppers” in Class 7, and/or “kitchen tools, namely, hand operated food dicers, hand-operated food choppers” in Class 8.  If applicant is offering another genre of kitchen tools, the applicant must so specify and properly classify the goods.  The wording “camping lights” is indefinite because it is not clear what type of lights is being claimed – applicant may specify “Camping lights, namely, lamps for outdoor use” if accurate, and these goods would be classified in Class 11.  Further the wording “soldier_water_filter” is indefinite because the punctuation makes it unclear.  Water filters are properly classified in Class 11 so applicant may specify “water filters for use by soldiers” if accurate.  Further, the wording “airbrush painting sprayers” is properly classified in Class 7 with paint sprayers.  Further the wording “pet supplies” is very indefinite – this could include pet food in Class 31, electric pet collars in Class 18 or electric fences for pets in Class 9.  Applicant must clarify this language and classify it as appropriate.  The remainder of the wording requires punctuation to clarify the individual items. 

 

Applicant may adopt the following identification, if accurate:

 

Class 6:  metal coin banks

 

Class 7:  Electric balloon inflator pump; Mobile electric power generators; Solar-powered electric water pumps for {applicant must indicate the use of these pumps, e.g., swimming pools}; kitchen tools, namely, {applicant must specify the specific items claimed, e.g., electric food choppers}; Airbrush Painting Sprayers;

 

Class 8:  kitchen tools, namely, {applicant must specify the specific items claimed, e.g., hand operated food dicer, hand-operated food choppers}

 

Class 9:  Car In-dash DVD and MP3 player; vehicle safety equipment, namely, LCD monitor and reaview camera; Mobile headset for use with {applicant must specify the type of device, e.g., computers, telephones, cellular or mobile phones}; mobile power {applicant must specify the nature of this item – mobile power supplies}; camera lenses for use on mobile phones; electric digital keyless door locks; Temperature Controller for {applicant must specify the use or purpose of the controllers, e.g., for controlling household temperatures}; camera mounted on a USB cable; tablet {applicant must specify the type of tablet claimed, e.g., tablet computers}; Leather case with integrated keyboard for tablet computers; Adapter; Pet Supplies, namely, electric fences for pets; Barcode scanner; point of sale  printer; Walkie Talkie

 

Class 10:  endoscopy camera, namely, USB wire camera

 

Class 11:  LED {applicant must specify the type of light, e.g., mood lights, underwater lights, light bulbs} light; LED candle lights; solar powered LED string lights; Camping lights, namely, lamps for outdoor use; water filters for use by soldiers;

 

Class 16:  Car bumper Stickers; writing tablet

 

Class 18:  Pet supplies, namely, electronic pet collars,

 

Class 21:  Piggy banks; non-metal coin banks; kitchen tools, namely, {applicant must specify the specific items claimed, e.g., can opener,

 

Class 31:  Pet supplies, namely, pet food

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least 10 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

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

 

(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.”

 

(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 Classes 7, 8, 9, 10, 11, and 18 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

RESPONSE GUIDELINES

 

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.

 

 

 

/Natalie L. Kenealy/

Examining Attorney

Law Office 104

(571) 272-7817

Natalie.Kenealy@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 3/21/2014 FOR U.S. APPLICATION SERIAL NO. 86140821

 

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 3/21/2014 (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.