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: 7/1/2014

 

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.

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification of Goods
• Specimen Refused

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

IDENTIFICATION OF GOODS

 

The wording “wireless accessories” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must indicate the specific goods or the function and use of the goods. 

 

Applicant should note that any wording in bold, in italics, underlined, and/or in ALL CAPS below offers guidance and/or shows changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined, and/or in ALL CAPS.

 

Applicant may adopt the following identification of goods, if accurate:

 

International Class 9: Accessories for lighting fixtures, namely, plastic pole with electrical source in protective cover; Armbands specially adapted for personal electronic devices, namely, wireless accessories                                                       [please indicate specific device, e.g., mobile phones, MP3 players]; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Blank integrated circuit cards for recording, transmitting, and reproducing sound and images in mobile telephone services; Camera stability accessory, namely, a support arm, vest and sled for film and video cameras to absorb shaking moves while shooting; Carrying cases for mobile computers; Cases for mobile phones; Cellular phone accessory charms; Cellular phone usage detection system comprising a camera and a mobile phone signal receiving device; Computer application software for mobile phones, namely, software for wireless accessories                                                       [please specify the function of the programs, e.g., use in electronic storage of data, use in application operation]; Computer game software for use on mobile and cellular phones; Computer software to enable the transmission of photographs to mobile telephones; Computer software, namely, an application allowing sales and field service employees to update and receive data stored in an enterprise's computer databases in real time, using a mobile device, with full telephony integration with the telephone and/or software features of the mobile device; Computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment; Computer software, namely, software development tools for the creation of mobile internet applications and client interfaces; Computer stands specially designed for holding a computer, printer and accessories; Devices for hands-free use of mobile phones; Digital camera accessory in the nature of a digital photo viewer; Downloadable electronic game software for use on wireless accessories                                                       [please indicate specific device, e.g., mobile and cellular phones, handheld computers]; Downloadable graphics for mobile phones; Downloadable ring tones and graphics for mobile phones; Downloadable ring tones for mobile phones; Downloadable software in the nature of a mobile application for wireless accessories; Earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; Encoded electronic chip cards for wireless accessories                                                              [please indicate use, e.g., identifying particular users of computers and mobile telephones]; Eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; Fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Guitar amplifier accessory, namely, a fitted face plate to affix to an amplifier for use with electric guitars; Hands free devices for mobile-phones; Hardened units composed of microprocessors and integrated transmitters and receivers installed in the field and on board both mobile and stationary equipment in large scale mining, construction, and industrial operations to collect data from various applications, to transmit the data to central processing facilities, and to receive data transmissions directed to the applications and equipment; Headsets for cellular or mobile phones; Headsets for mobile telephones; High frequency mobile and sea-based communication antennas; Keyboards for mobile phones; Mobile computers; Mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for collection and management of data; Mobile data receivers; Mobile data terminal (MDT); Mobile or portable fax machines; Mobile phone straps; Mobile phones; Mobile radios; Mobile telephone accessories, namely, belt clips; Mobile telephone apparatus with built-in facsimile systems; Mobile telephone batteries; Mobile telephones; Photographic accessory, namely, film backs; Protective sports helmet accessories that attach to the helmets, namely, mouth guards, ear pads, throat protectors, chin straps, face masks, jaw pads and eye shields; Public address (PA) and sound system accessories, namely, microphone stands, speaker stands, microphone cables, speaker cables, speaker boxes and sound mixers; Security devices, namely, mobile image projection device for displaying retinal images; Straps for mobile phones; Wireless digital electronic apparatus to secure and protect data and images on all forms of wireless equipment including mobile telecommunications equipment using an automatic synchronization process and alarm notification of the loss or theft of the wireless equipment including mobile telecommunications equipment

 

See TMEP §1402.01.

 

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 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.

 

SPECIMEN REFUSED

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Specifically, applicant’s specimen is a reproduction of the drawing and does not show the applied-for mark in association with the goods stated in the application.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods may include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods.  See TMEP §§904.03 et seq.

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. 

 

(2)  Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.

 

For an overview of both response options referenced above, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address.  See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these three requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.  

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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.

 

 

 

 

/LaurenEBurke/

Examining Attorney

Law Office 106

571-272-2763

lauren.burke@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 7/1/2014 FOR U.S. APPLICATION SERIAL NO. 86222047

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 7/1/2014, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/LaurenEBurke/

Examining Attorney

Law Office 106

571-272-2763

lauren.burke@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.