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: 3/6/2015

 

 

 

 

INTRODUCTION TO ADDITIONAL NON-FINAL OFFICE ACTION

 

This additional, non-final Office Action is written in response to applicant’s “Response to Office Action” (hereinafter “Response”) dated February 11, 2015.

 

In her last Office Action, the examining attorney issued the following refusal(s), requirement(s) and/or advisories: Requirement for a definite identification of goods; Requirement for an accurate mark description.

 

In its Response, applicant provided a corrected mark description. This requirement is herein satisfied.  TMEP §§713.02, 714.04..  Applicant provided amendments to its identification of goods. Wording in these amendments remains indefinite. Additionally, after further consideration, an additional issue with the identification of goods has been identified.  This issue is new and provides the basis for this additional, non-final Office Action.

 

 

REQUIREMENT FOR A DEFINITE IDENTIFICATION OF GOODS – Additional Issue

 

“It is the applicant's duty and prerogative to identify the goods and services.” TMEP §1402.01(e).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.

 

“[T]he examining attorney may require amendment of the identification of goods and/or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules.”  TMEP §1402.01(e).  As such, the examining attorney requires the following amendments to the identification of goods.

 

The wording “software based VoIP multi-channel/multi access professional communications system based on a dedicated client/server architecture, namely, computer software for VoIP and video” was included at the time of application. This wording was indefinite, but not identified as such in the initial Office action.  In applicant’s response, applicant amended this clause in the identification to, “software based VoIP multi-channel and multi access professional communications system based on a dedicated client-server architecture, namely, computer software for VoIP and video.” This wording – in its amended and original form-  is indefinite and must be clarified to state the function of applicant’s VOIP software or the specific function of the communication system.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Interoperable software-based VoIP multi-channel and multi access professional communications system based on a dedicated client-server architecture for providing VOIP phone and VOIP video.”

 

The wording “electronic products in the nature of network audio and control data devices, namely, high speed redundant optical fiber converters, converter devices, namely, analog to digital converters (ADCs), interface devices, namely, interfaces and transports for signals of pro-audio systems, namely, professional intercom systems and digital mixing consoles on the network, repeater devices, namely, extends the distances of wired intercom connections 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. From applicant’s repeated use of the term “namely,” it is not clear what clauses serve to modify other clauses. Therefore, applicant must clarify this wording.  Applicant may substitute the following wording, if accurate:  “electronic network, conversion, interface and repeater devices in the nature of high speed redundant optical fiber converters, analog to digital converters (ADCs) devices, repeater devices for extending the distances of wired intercom connections and interface and transporting devices for transporting voice, data, and video communications signals across multiple network infrastructures and communications protocols comprising professional intercom systems and digital network mixing consoles; software for interfacing, routing, delivering, transmitting, receiving,  and 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 the purpose of enabling bi-directional media and data communication between the controller and a user-operator or multiple users-operators on a network,  communication system or media transport system.”

 

 

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 intercom main stations, frames, speaker stations, intercom remote stations, remote matrix intercom panels, intercom beltpacks for communicating with intercommunication main stations, headsets for use with intercom devices, handsets for use with intercom devices, microphones, interface modules, control stations, rack-mount panels and mountings, transceiver-antennas, power supply assemblies, and parts therefor;  Electronic control panels for intercommunication equipment and systems; Computer software for setup, configuration and operation of intercommunication equipment and systems; Interoperable software-based VoIP multi-channel and multi access professional communications system based on a dedicated client-server architecture for providing VOIP phone and VOIP video; Electronic network, conversion, interface and repeater devices in the nature of high speed redundant optical fiber converters, analog to digital converters (ADCs) devices, repeater devices for extending the distances of wired intercom connections and interface and transporting devices for transporting voice, data, and video communications signals across multiple network infrastructures and communications protocols comprising professional intercom systems and digital network mixing consoles; Software for interfacing, routing, delivering, transmitting, receiving,  and 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 the purpose of enabling bi-directional media and data communication between the controller and a user-operator or multiple users-operators on a network,  communication system or 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.

 

 

RESPONSE/CORRESPONDENCE INFORMATION & GUIDELINES

 

Please note that ]informal communications with the examining attorney “may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal.” TMEP §709.05.  Additionally, for consideration of arguments regarding any substantive refusal to be considered, they must be filed in a formal response.  Id.  The trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action.  To this end, applicant may telephone or e-mail the assigned trademark examining attorney.  Please note that the examining attorney cannot provide advice on trademark law.  37 C.F.R. §2.11; TMEP §709.06

 

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; all relevant e-mail communications will be placed in the official application record. See 37 C.F.R. §§2.62 (c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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).

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.  Additional 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 3/6/2015 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 3/6/2015 (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.