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: 12/23/2014

 

 

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 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).

 

SUMMARY OF ISSUES that applicant must address:

 

• Requirement for a definite identification of goods
• Requirement for an accurate and concise mark description

 

 

 

REQUIREMENT FOR A DEFINITE IDENTIFICATION OF GOODS

 

The wording “main stations”, “remote stations”, “remote panels”, beltpacks, headsets, handsets,  in “Intercommunication and media transport equipment, namely, cabled, wireless and matrix intercoms and intercommunication systems comprised of main stations, frames, controller cards, speaker stations, remote stations, remote panels, beltpacks, headsets, handsets, microphones, interface modules, control stations, rack-mount panels and mountings, transceiver-antennas, power supply assemblies, and parts therefor” the identification of goods is indefinite and must be further clarified.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Intercommunication and media transport equipment, namely, cabled, wireless and matrix intercoms and intercommunication systems comprised of main station audio receivers, frames, controller cards, speaker stations, remote control receiver stations, remote controlled electric control panels, beltpacks for holding batteries, headsets for use with cellular communication devices, handset cradles for holding headsets, microphones, interface modules, control stations, rack-mount panels and mountings, transceiver-antennas, power supply assemblies, and parts therefor.”

 

The wording “electronic products namely network, conversion, interface and repeater devices and software for interfacing, routing, delivering, transmitting, receiving, processing audio and signaling information to and from communication networks, namely, local area networks (LAN), wide area networks (WAN) or Internet, IP networks, optical networks, wireless networks and global networks for enabling bi-directional media and data communication between the controller and a user/operator or multiple users/operators on the network or communication system or media transport system” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Specifically, applicant must state the specific nature of its network devices, conversion devices, interface devices, and repeater devices.  Additionally, the use of the term “or” and “/” must be amended.  The  “/” can be interpreted as the term “or.”  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.  Generally, the terminology “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a).  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.  Applicant may substitute the following wording, if accurate:  “electronic products, namely,  computer network interface devices, audio converters,  Ethernet repeaters and software all for interfacing, routing, delivering, transmitting, receiving, processing audio and signaling information to and from communication networks in the nature of local area networks (LAN), wide area networks (WAN) or Internet, IP networks, optical networks, wireless networks and global networks for enabling bi-directional media and data communication between the controller and a user-operator and  multiple users-operators on a communication network, communication system and media transport system.”

 

Therefore, in light of the foregoing, applicant may adopt the following identification of goods in its entirety, if accurate:

 

            International Class 9:   Intercommunication and media transport equipment, namely, cabled, wireless and matrix intercoms and intercommunication systems comprised of main station audio receivers, frames, controller cards, speaker stations, remote control receiver stations, remote controlled electric control panels, beltpacks for holding batteries, headsets for use with cellular communication devices, handset cradles for holding headsets, microphones, interface modules, control stations, rack-mount panels and mountings, transceiver-antennas, power supply assemblies, and parts therefor; Electronic products, namely,  computer network interface devices, audio converters,  Ethernet repeaters and software all for interfacing, routing, delivering, transmitting, receiving, processing audio and signaling information to and from communication networks in the nature of local area networks (LAN), wide area networks (WAN) or Internet, IP networks, optical networks, wireless networks and global networks for enabling bi-directional media and data communication between the controller and a user-operator and  multiple users-operators on a communication network, communication system and media transport system

 

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.

 

 

 

REQUIREMENT FOR AN ACCURATE & CONCISE MARK DESCRIPTION

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of a stylized letter “C” with a circle in its center.  Both the circle and the “C” have vertical lines of varying widths running through them.

 

 

 

CORRESPONDENCE GUIDELINES

 

If applicant has questions regarding this Office action, please e-mail or telephone 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.

 

Instructions for responding to this Office action are located below the signature block.

 

 

 

 

/N. Gretchen Ulrich/

Trademark Attorney-Advisor

Law Office 113

U.S. Patent & Trademark Office

phone: (571) 272-1951

gretchen.ulrich@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 12/23/2014 FOR U.S. APPLICATION SERIAL NO. 86391190

 

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 12/23/2014 (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.