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: 8/1/2015

 

 

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.

 

 

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3584632 & 3237830.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

 

Applicant’s mark is QI for USB flash drives; software program for upload and download; time recording apparatus; phototelegraphy apparatus; laptop computers; electronic notice boards; portable telephone, cell phone cases, covers and chargers; satellite navigational apparatus; cell phone straps; bags adapted for laptops and portable phones and accessories; portable media players; in-ear headphones; headphones; wires, connection cables; integrated circuits, plugs, sockets and other contacts and electric connections; voltage stabilizing power supply; alarms; protection devices for personal use against accidents and theft; wearable digital electronic devices in the forms of wristwatches, wristbands and eyeglasses, bangle and spectacles for the wireless receipt, storage and /or transmission data and messages, home automation system; lighting control system and devices; video conferencing system and devices; data collaboration system and devices; audio conferencing system and devices; heating and air-conditioning control system and devices; curtain or blind rolling control system and devices; central control system and switching devices for remote control indoor and outdoor; sound control system and devices; home cinema system and devices; photocopiers and parts thereof, toner for use with photocopiers; carrying bags and covers for office machines and devices and home automation apparatus and devices; Batteries, walkie-talkies, solar recharger for outdoor and indoor use, wireless telephones, wired telephones, mobile telephones, global positioning system, telephone answering machines, cash registers, facsimile machines; manual and electric calculators and replacement parts thereof; portable electronic calculators and replacement parts thereof; printout devices for calculators; data processing machines and replacement parts thereof; keyboards, paper sorting and feeding devices, storage, input and output devices, namely, blank flash drives, external computer hard drives for use with data processing machines; photocopiers and replacement parts thereof; Computer bags; Messenger bags especially adapted for holding laptops; Messenger bags especially adapted for holding electronic book readers; dust covers for computers, cash registers, facsimile machines, photocopiers; protective covers for smartphones and electronic reading devices; protective covers and cases for tablet computers.   Registrant’s marks are QI, U.S. Registration No. 3584632 for full set wireless telephones, & telephones & QI, U.S. Registration No. 3237830, for laptop computer bags.

 

QI, U.S. Registration No. 3584632: for full set wireless telephones, & telephones.   The marks both share the wording QI in common.   Additionally, the goods of the two parties are similar if not identical in that both the applicant and the registrant feature telephones and the applicant also features telephone related accessories, among other things.

 

QI, U.S. Registration No. 3237830: for laptop computer bags. The marks both share the wording QI in common.   Additionally, the goods of the two parties are similar if not identical in that both the applicant and the registrant feature bags adapted for laptops/laptop computer bags.   The applicant also features related goods, namely, laptop computers. 

 

 

The goods of the applicant and registrant are likely to travel through the same channels of trade and they are likely to be encountered by the same consumers.   Those consumers, when coming across the goods are likely to believe that they derive from the same and not from different sources.   Therefore, likelihood of confusion may occur.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Therefore, for the reasons listed above, registration is refused under section 2(d) of the Trademarks Act.

 

 

 

PRIOR PENDING APPLICATION

 

 

The filing date of pending U.S. Application Serial No. 86599072 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

Should the applicant elect to respond to this office action the following informality should also be addressed.

 

 

 

IDENTIFICATION OF GOODS IS INDEFINITE

 

 

The wording in the identification of goods is indefinite and must be clarified because some of the goods were too broadly defined and require further clarification.  See TMEP §1402.01.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

Due to the extent of the proposed amendments the examining attorney will incorporate the proposed changes in the body of the application and will write them in bold letters.

 

The following amendments are suggested:

 

“Blank USB flash drives; software program for upload and download of (the applicant must specify what is being uploaded and downloaded e.g. “medical data records; time recording apparatus; phototelegraphy apparatus; laptop computers; electronic notice boards; portable telephone, cell phone cases, covers and chargers; satellite navigational apparatus; cell phone straps; bags adapted for laptops and portable phones and accessories; portable media players; in-ear headphones; headphones; power wires, connection cables; integrated circuits, adapter plugs, sockets and other electric contacts and electric connections; voltage stabilizing power supply; burglar alarms; protection devices for personal use against accidents and theft, namely safety harnesses and personal security alarms; wearable digital electronic devices in the forms of wristwatches, wristbands and eyeglasses, bangle and spectacles for the wireless receipt, storage and /or transmission data and messages, home automation system; lighting control system and devices consisting of lighting controllers; video conferencing system and devices consisting of video monitors; data collaboration system and devices, namely, document collaboration servers; audio conferencing system and devices, namely, Ethernet ports; heating and air-conditioning control system and devices, namely, meters and sensors; curtain or blind rolling control system and devices, namely, (specify what these devices comprise); central control system and switching devices for remote control of curtains indoor and outdoor; sound control system and devices for aircaraft comprising a vibration sensor; home cinema system and devices, namely, audio receivers; photocopiers and parts thereof, toner for use with photocopiers; carrying bags and covers for office machines and devices and home automation apparatus and devices, namely, computer terminals; Batteries, walkie-talkies, solar recharger for outdoor and indoor use, wireless telephones, wired telephones, mobile telephones, global positioning system, telephone answering machines, cash registers, facsimile machines; manual and electric calculators and replacement parts thereof; portable electronic calculators and replacement parts thereof; printout devices for calculators; data processing machines and replacement parts thereof; keyboards, paper sorting and feeding devices, storage, input and output devices, namely, blank flash drives, external computer hard drives for use with data processing machines; photocopiers and replacement parts thereof; Computer bags; Messenger bags especially adapted for holding laptops; Messenger bags especially adapted for holding electronic book readers; dust covers for computers, cash registers, facsimile machines, photocopiers; protective covers for smartphones and electronic reading devices; protective covers and cases for tablet computers, in International Class 9.”

 

 

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.

 

 

 

MAY NOT EXPAND THE IDENTIFICATION

 

 

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. 

 

 

 

 

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.

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Florentina Blandu/

Examining Attorney

U.S. Patent & Trademark Office

l.o. 117

Florentina.Blandu@uspto.gov

Tel 571 272 9128

Fax 571 273 9128

 

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 8/1/2015 FOR U.S. APPLICATION SERIAL NO. 86599823

 

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 8/1/2015 (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.