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: 5/6/2015

 

This Office action is in response to applicant’s communication filed on February 17, 2015.

 

The requirement for a foreign registration certificate has been satisfied and the Section 2(d) refusals based on Registration Nos. 305064, 3930382, 3012971, 3111140, 3307007, and 3247110 been withdrawn in light of the amendment to the identification of goods.  TMEP §§713.02, 714.04.  However, the Section 2(d) refusal based on Registration  No. 4588823 is maintained and continued.

 

In addition, there is an indefinite entry in the identification of goods that was not raised in the previous Office action.  Accordingly, a new, non-final Office action is hereby issued.  The undersigned apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES:

 

• Clarification of Identification of Goods

 

CLARIFICATION OF IDENTIFICATION OF GOODS

 

The wording “downloadable electronic publications” in the identification of goods is indefinite and must be replaced with the common name of the type of publication, e.g., pamphlets, brochures, newsletters, journals, magazines, etc.  Applicant must also specify the subject matter or field of use of the publications.  TMEP §1402.03(e).

 

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

 

Computer application software for mobile telephones and tablet computers, namely, application software for purchasing, subscribing, downloading, playing and listening to digital reading contents, namely, digital electronic-books, digital electronic-newspapers and digital electronic-magazines; downloadable software application for downloading books or magazines content for viewing on smartphones and tablet computers; downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., magazines, books, etc.} in the field of {indicate subject matter or topic of publication}; mobile telephones; digital cameras; portable media players; wireless headsets for mobile phones, smart phones and tablet computers; rechargeable batteries; battery chargers; leather cases for mobile phones, smart phones and tablet computers; flip covers for mobile phones, smart phones and tablet computers; television receivers; audio electronic components, namely, surround sound systems; digital set-top boxes; dvd players; light emitting diode displays; computer monitors; 3d eye glasses; printers for computers; semiconductors

 

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

 

ASSISTANCE

 

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. §§2.62(c), 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.

 

 

/ Zachary B. Cromer /

Trademark Attorney

Law Office 104

Phone: (571) 272-6089

Fax: (571) 273-6089

zachary.cromer@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.