Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 9/23/2014

 

This Suspension Letter is in response to applicant’s communication filed on August 26, 2014.  The amended Identification of Goods in Classes 7, 10, 11 and 21 is acceptable as amended.  Certain wording/phrases in Class 9 remain unacceptable and potentially misclassified.  As to said wording, the requirements for (1) Identification of Goods; (2) Insufficient Fee(s) (potentially); (3) Multi-class Advisory and Requirements – are maintained and continued (and outlined in detail below). The statements as to Significance of the Mark (and “no Translation” statement) are noted and resolve this issue/requirement.  The prior registration are claimed and of record.  The dual 1(b) and 44(d) basis – with the request from the Applicant to SUSPEND pending receipt of the foreign certificate of registration – cause this U.S. application to be properly suspended.  As to the (original) 44(e) basis (referencing Japan Registration No. 3162408, foreign registration date of 6/28/1996, foreign expiration date of 6/28/2016) as to all classes, this must be clarified.  If this 44(e) foreign registration is a basis, then the Applicant must submit the foreign registration for review.  If this was inaccurate or a typo, then that should be noted so this information can be deleted from the U.S. Trademark Office database in connection with the present application.  It is presumed that the 44(d) claim based on foreign Application No. 2013-087501 with a foreign filing date of 11/8/2013 is a different foreign application (as it simply does not match any information that was provided in connection with the 44(e) original basis).

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and maintained:

 

(1)  Identification of Goods – Certain Wording/Phrase in Class 9

(2)  Insufficient Fee(s)

(3)  Multi-class Advisory and Requirements

(4)  Clarification of Original 44(e) Basis – Submit Foreign Certificate or Delete This Reference

 

Identification of Goods – Clarification Needed

 

The amended Identification of Goods in Classes 7, 10, 11 and 21 is acceptable as amended.

 

Certain wording in the identification of goods in Class 9 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 following phrases remain unacceptable (currently listed in Class 9) as indefinite and/or possibly misclassified:

 

(1)  The “human detectors” in the larger phrase “detectors, namely, detectors for electrical power outage, detectors for electric current, human detectors and water leak detectors;” is unclear.  This must be further clarified e.g. “motion detectors for detecting human movement” in Class 9.  Or this phase must be deleted.

(2)  The “visual sensors” and “image sensors” and “fiber sensors” in the larger phrase “sensing apparatus, namely, photomicrosensors, MEMS (Microelectromechanical systems) mechanical sensors, flow sensors, pressure sensors, thermal sensors, photovoltaic sensors, visual sensors, proximity sensors, vibrational sensors, inclination sensors, liquid leakage sensors, displacement sensors, length measuring sensors, ultrasonic wave sensors, sensors for measuring incidence of light from outside of car, image sensors, fiber sensors, and temperature sensors;” are unacceptable as is and must be further clarified.  Or deleted.

(3)  The “testing apparatus not for medical use, namely, testing apparatus for PCB (printed circuit boards) and sheet, and testing apparatus using x-ray CT (computed tomography);” must further clarify what is being tested e.g. “… for tracking movement”.  That would be acceptable in Class 9.

(4)  The “printer ribbons” – namely, “computer printer ink ribbons” would be Class 16 goods if they are not “sold as a unit” with the “point of sale terminal” e.g. “point of sales terminal and peripheral equipment, namely, cash drawers, column receipt printers, barcode scanners, printer cables, and printer ribbons, all sold as a unit;” in Class 9 and/or “computer printer ink ribbons” in Class 16.

(5)  The “automated railway ticket gates” remains unacceptable with this wording.  “Gates” are now specifically classified by their material composition e.g. “turnstyles of metal” in Class 6; “turnstyles, not of metal” in Class 19.  See attached ID Manual Listing re: “gates” and “turnstyles” for this issue.  Gates, including “automated” gates are no longer acceptable in Class 9.

(6)  The phrase “electronic apparatus, namely, devices for recording and analyzing sleep patterns, not for medical purposes;” is not clearly within Class 9 as written.  Most “sleep” goods are in Class 10.  It is noted these are “not for medical purposes”.  The term “devices” causes the ID to remain unclear.  If the goods are e.g. “computer hardware and/or computer software for …” then those would be in Class 9 e.g. “electronic apparatus, namely, computer hardware and computer software for recording and analyzing sleep patterns, not for medical purposes;” in Class 9.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

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.

 

This requirement is maintained and continued as to the specific wording/phrases outlined above. 

 

The Insufficient Fees and Multi-class Advisory and Requirements are also maintained and continued in direct connection with these phrases.

 

Clarification of (Original) 44(e) Foreign Registration

 

The Applicant, in the original application included information about Japan Registration No. 3162408, foreign registration date of 6/28/1996, foreign expiration date of 6/28/2016 - as to all classes.  No foreign registration certificate was include related to this foreign registration.

 

The Applicant must submit this foreign certificate of registration, if it is pertinent to this application, or delete the reference to this 44(e) basis.  It is causing confusion in the record that should not be there.

 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

If the applicant has any questions or needs assistance, please telephone the assigned examining attorney.

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

gina.fink@uspto.gov

 

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 Trademark Electronic Application System (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 9/23/2014 FOR U.S. APPLICATION SERIAL NO.86144840

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.