| To: | LG ELECTRONICS INC. (mailroom@bskb.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 86837226 - LIBRA - 3449-2579US1 |
| Sent: | 3/25/2016 12:51:44 PM |
| Sent As: | ECOM121@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 86837226
MARK: LIBRA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: LG ELECTRONICS INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/25/2016
SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1592807, 2142987, 2352649, 3257997, 3257998, 4097624, and 4546615. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations. U.S. Registration Nos. 3257997 and 3257998 are owned by the same entity, namely Libra Dynamics International Limited.
Applicant’s mark is LIBRA in standard characters for the following goods in International Class 9:
Smart phones; Portable communications apparatus, namely, handsets, walkie-talkies, satellite telephones and Personal Digital Assistants; Display for mobile phones; Display modules for mobile phones; Semiconductor chips; Application processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Monitors (computer hardware); Monitors for commercial purpose; Digital Signage; Wearable Computer; Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; Wireless headsets; Headset; Wireless headset for mobile phones; Ear phones; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Network attached Storage; Chargers for electric batteries for smart phones (Wireless chargeable); Liquid crystal protective film for smart phones; Smart phone rings; Power supplies for smart phones; DVD player; Blu ray player; Handheld media players; Handheld CD players; Mobile phones cases; Supporting speaker for mobile phones; Flip cover for mobile phones; Tablet computers cases; Flip cover for tablet computers; Batteries for mobile phones; Battery chargers for mobile phones; Supporting battery for mobile phones; Chargable batteries; Battery compensation chargers; Battery charge devices; Mouse(computer peripheral); Keyboards; USB; Universal serial bus (USB) Dongle (Wireless network adapters); Digital set top boxes; Digital cameras; Network surveillance cameras; Motion recognizing sensors; Gyro sensors using GPS functions; Motion detectors; Invader sensors; Privacy protection sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor; Digital sensory devices; Object detecting sensors; Sensor controllers; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons; Sensor station; Audio speakers; Digital door locks; Remote controls for controlling electronic products; Home network devices; Electronic security system for home network; Home automation device; Downloadable smart phone application (software); Interfaces and peripheral devices for computers; Cloud server; Server for home network system; Server for home automation; Digital audio interface apparatus; Wireless audio/video receivers; Wireless communication apparatus; Remote multi switches; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air measuring apparatus; Dust measuring apparatus; Weight scales not for medical purposes; Measuring apparatus not for medical purposes; Automatic control apparatus and instruments; Light switches; Electric power distribution apparatus; Apparatus for improving power efficiency; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Lighting control apparatus; Apparatus for diagnosing electrical power installations; Apparatus for measuring/monitoring/analyzing electricity consumption; Electric wire and cable; Digital audio and video recorders and players; Speaker systems; Electric audio and visual apparatus and instruments; Handheld multimedia players; Modems; Wireless routers; Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Telecommunication converters; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software; Digital electronic controllers; Plugs; Sockets, plugs and other contacts (electric connectors); Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels; Solar power panel for generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer hardware modules for use in internet of things electronic devices; Computer application software; Downloadable computer software applications; Operating system program for smart TV; Operating system program for smart phones; Multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; Application software for Televisions; Application software for smart phone; Computer programs for accessing, browsing and searching online databases; Computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; Computer software for the remote control of telephone sets and radiotelephony sets; Computer software and firmware used to allow electronic devices to share data and communicate with each other; Computer operating system software; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Software for network and device security; Computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; Software for mobile device management
The cited registrations are as follows:
LIBRA as a typed drawing (Reg. No. 1592807) for “computer programs and instruction manuals sold therewith, for use in engineering applications” in International Class 9.
LIBRA as a typed drawing (Reg. No. 2142987) for “audio editors; sound mixing consoles and parts therefor; all for use in the professional audio industry” in International Class 9.
LIBRA as a typed drawing (Reg. No. 2352649) for “electronic components for security systems; namely, electromechnical controls for use in entrance access, burglar alarms, and fire detection alarms; security alarm sensors and smoke detectors” in International Class 9.
LIBRA in standard characters (Reg. No. 3257997) for “remote controlled motion picture camera mounts” in International Class 9.
LIBRA with a design and stylization (Reg. No. 3257998) for “remote controlled motion picture camera mounts” in International Class 9.
LIBRATONE with a design and stylization (Reg. No. 4097624) for “electric and electronic apparatus, instruments and equipment for use in connection with the recording, transmission, reproduction, reception, control, operating and amplification of sound or images, namely, loudspeakers, loudspeaker systems, stereo tuners, amplifiers, DVD and compact disc players and recorders, microphones and sound mixers; analogue and digital products for audio room correction, namely, distribution amplifiers for audio and video signals; audio and signal processing apparatus, namely, digital signal processors; audio electronic components, namely, surround sound systems; parts and fittings for all the aforesaid goods, namely, headphones, subwoofers, remote control units for loudspeakers, loudspeaker systems and amplifiers, aerials, converters and television decoders; computer hardware and application software for the recording, transmission, reproduction, reception, control, operating and amplification of sound or images over loudspeakers and loudspeaker units/systems, tuners, amplifiers, DVD and compact disc players, microphones and sound mixers; electric and electronic apparatus, instruments and equipment, namely, loudspeakers for computers, laptops, handheld computers, telephones, portable telephones, mobile digital electronic devices for the sending and receiving of telephone calls, e-mails, video, music and other digital data, and for MP3 and other digital format audio and video players” in International Class 9.
LIBRA EORZEA in standard characters (Reg. No. 4546615) for “computer game software; video game software; sound recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and fictional stories; audio visual recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and animated fictional stories; prerecorded compact discs featuring music; prerecorded video discs featuring music and animated fictional stories; mouse pads; straps for cellular phones; downloadable musical sound recordings; downloadable ring tones for mobile phones; downloadable image files containing artworks, texts, graphics and photographs; downloadable wallpaper graphics for mobile phones; downloadable electronic publications in the nature of magazines, journals and newsletters in the field of computer games and video games” in International Class 9.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Additionally, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Finally, matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In these cases, applicant’s standard character mark is LIBRA, and all of or the dominant portion of each of registrants’ respective marks is LIBRA. Thus, applicant’s mark is identical to all or the dominant portion of each of registrants’ respective marks in terms of appearance and sound. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrants’ respective goods.
Therefore, applicant’s mark and registrants’ marks share the same commercial impression and are confusingly similar.
Comparison of Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications set forth in the application and registrations have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in each of registrants’ more narrow identifications.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act for applicant’s goods.
ADVISORY: PRIOR-FILED APPLICATION
In addition to the above-cited registrations, the filing date of pending U.S. Application Serial No. 86299406 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, in addition to its response regarding the above-cited registrations, 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 as to the referenced application in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues for the referenced application.
If applicant responds to the refusals, applicant must also respond to the requirements set forth below.
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
Select entries from applicant’s identification of goods are indefinite and must be clarified. See TMEP §1402.01. Furthermore, select entries from the applicant’s identification of goods need clarification because they are too broad and could include goods classified in other international classes. See TMEP §§1402.01, 1402.03.
Therefore, applicant must amend the identification of goods to delete the wording “blu ray” and substitute the common commercial or generic name of the goods.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods within an international class. Id. However, colons and periods should not be used in an identification of goods. Id.
The chart below identifies applicant’s indefinite and broad identification entries, the rationale explaining why the entries are indefinite or broad, and suggested definite and clear wording which applicant may adopt. The chart also identifies applicant’s entries that contain parentheticals and improper punctuation and suggested wording which applicant may adopt. Applicant may substitute the wording contained within the table for each indefinite and broad entry, if accurate.
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Applicant Classification and Identification |
Reason for Amendment |
Suggested Identification and Classification |
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INTERNATIONAL CLASS 9 |
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Display for mobile phones; |
Indefinite because it does not specify the common commercial name for the type of display. Applicant must further specify the common commercial name for its goods. |
_________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display for mobile phones |
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Display modules for mobile phones; |
Indefinite because it does not specify the common commercial name for the type of display modules. Applicant must further specify the common commercial name for its goods. |
_________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display modules for mobile phones |
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Application processors; |
Indefinite because it does not specify the common commercial name for the type of application processors. Applicant must further specify the common commercial name for its goods. |
application processors, namely, data processors |
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Printers for use with computers; |
Too broad and could include goods in other international classes. For example, 3D printers are classified in International Class 7, while document printers are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 7: printers for use with computers, namely, 3D printers
International Class 9: document printers for use with computers |
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Monitors (computer hardware); |
Applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods. |
computer hardware in the nature of computer monitors |
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Monitors for commercial purpose; |
Too broad and could include goods in other international classes. For example, certain medical monitors are classified in International Class 10, while computer and video monitors are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
computer and video monitors for commercial purpose |
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Display for television receivers; |
Indefinite because it does not specify the common commercial name for the type of display. Applicant must further specify the common commercial name for its goods. |
_________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display for television receivers |
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Display modules for television receivers; |
Indefinite because it does not specify the common commercial name for the type of display modules. Applicant must further specify the common commercial name for its goods. |
_________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display modules for television receivers |
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Wireless headsets; |
Too broad and could include goods in other international classes. For example, certain wireless headsets used for gaming are classified in International Class 28, while computer and mobile telephone headsets are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 9: wireless headsets for computers and mobile telephones
International Class 28: wireless headsets, namely, gaming headsets adapted for use in playing video games |
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Headset; |
Too broad and could include goods in other international classes. For example, certain headsets used for gaming are classified in International Class 28, while computer and mobile telephone headsets are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 9: headset for computers and mobile telephones
International Class 28: headset, namely, gaming headset adapted for use in playing video games |
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Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; |
Indefinite because it does not specify the common commercial name for the type of tuners and equalizers. Applicant must further specify the common commercial name for its goods. |
audio components system, comprising surround sound speakers, loud speakers, stereo tuners, sound mixers, sound equalizers, audio recorders, and radios |
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Apparatus for the recording/transmission or reproduction of sound and images; |
Applicant must remove the forward slash from the identification. |
apparatus for the recording, transmission, or reproduction of sound and images |
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Network attached Storage; |
Indefinite because it does not specify the common commercial name for the type of storage. Applicant must further specify the common commercial name for its goods. |
computer network attached storage hardware |
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Chargers for electric batteries for smart phones (Wireless chargeable); |
Applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods. |
wireless chargers for electric batteries for smart phones |
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Smart phone rings; |
Indefinite because it does not specify the common commercial name for the type of rings. Applicant must further specify the common commercial name for its goods. |
downloadable smart phone ring tones |
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Blu ray player; |
“Blu ray®” is a registered trademark not owned by applicant. Applicant must substitute the common commercial or generic names of the goods. |
media player in the nature of a digital optical disc player |
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Supporting speaker for mobile phones; |
Indefinite because it does not specify the common commercial name for the type of speaker. Applicant must further specify the common commercial name for its goods. |
supporting audio speaker for mobile phones |
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Chargable batteries;
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Indefinite because it contains a typographical error in the identification. Applicant must further specify the common commercial name for its goods by correcting the error. |
chargeable batteries
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Mouse(computer peripheral); |
Applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods. |
computer mouse |
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USB; |
Too broad and could include goods in other international classes. For example USB-powered desktop fans are classified in International Class 11, while blank USB flash drives are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
blank USB flash drives |
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Universal serial bus (USB) Dongle (Wireless network adapters); |
Applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods. |
universal serial bus (USB) dongle in the nature of wireless computer network adapters |
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Gyro sensors using GPS functions; |
Indefinite because it does not specify the common commercial name for the function or use of the sensors. Applicant must further specify the common commercial name for its goods. |
sensors for determining position, namely, gyro sensors using GPS functions |
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Invader sensors; |
Indefinite because it does not specify the common commercial name for the function, use, or type of the sensors. Applicant must further specify the common commercial name for its goods. |
invader sensors, namely, motion detectors |
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Privacy protection sensors; |
Indefinite because it does not specify the common commercial name for the function, use, or type of the sensors. Applicant must further specify the common commercial name for its goods. |
privacy protection sensors, namely, alarm sensors |
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Range sensor; |
Too broad and could include goods in other international classes. For example certain medical use distance measuring sensors are classified in International Class 10, while sensors for measuring distance, not for medical use, are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
range sensor for measuring distance, not for medical use |
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Digital sensory devices; |
Too broad and could include goods in other international classes. For example certain digital sensors for medical use are classified in International Class 10, while certain digital sensors, not for medical use, are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
digital sensory devices, namely, _________ {specify type of digital sensor devices, e.g., humidity sensors, proximity sensors, pressure sensors, acceleration sensors, etc.} |
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Object detecting sensors; |
Indefinite because it does not specify the common commercial name for the type of the sensors. Applicant must further specify the common commercial name for its goods. |
object detecting sensors, namely, electrical sensor apparatus for sensing the presence or absence of objects by contact or pressure |
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Sensor controllers; |
Too broad and could include goods in other international classes. For example certain sensors for controlling machines are classified in International Class 7, while certain electrical sensors for controlling electrical devices are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
sensor controllers, namely, _________ {specify type of sensor controllers, e.g., touch sensor controllers for controlling lighting systems, pressure sensors for controlling hydraulic or pneumatic systems, etc.} |
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Sensors for measuring instruments; |
Indefinite because it does not specify the common commercial name for the use of the sensors. Applicant must further specify the common commercial name for its goods. |
sensors for measuring _________ {specify type of quality or attribute measured, e.g., distance, length, proximity, etc.} of instruments, not for medical use |
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Remote control apparatus; |
Too broad and could include goods in other international classes. For example remote controlled vehicles for transport are classified in International Class 12 and certain remote controlled toys and games are classified in International Class 28, while certain remote controls for items classified in International Class 9 are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 9: remote control apparatus, namely, remote controls for _________ {indicate specific devices, e.g. radios, televisions, stereos, etc.}
International Class 28: remote control apparatus, namely, video game interactive remote control units |
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Adapters for wireless network access; |
Indefinite because it does not specify the common commercial name for the use of the adapters. Applicant must further specify the common commercial name for its goods. |
adapters for wireless network access used to link computers to a telecommunications network |
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Multi-function touch buttons; |
Indefinite because it does not specify the common commercial name for the function, use, or type of buttons. Applicant must further specify the common commercial name for its goods. |
multi-function touch buttons, namely, _________ {specify common commercial name and/or purpose and function of the goods} |
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Sensor station; |
Indefinite because it does not specify the common commercial name for the function, use, or type of sensor station. Applicant must further specify the common commercial name for its goods. |
sensor station in the nature of an electric control panel for alarm sensors |
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Remote controls for controlling electronic products; |
Too broad and could include goods in other international classes. For example remote controls for electric vehicles for transport are classified in International Class 12 and certain remote controls for electronic toys and games are classified in International Class 28, while certain remote controls for items classified in International Class 9 are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 9: remote controls for controlling electronic products, namely, _________ {indicate specific electronic products, e.g. radios,
televisions, stereos, etc.} International Class 28: remote controls for controlling electronic products, namely, video game interactive remote control units |
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Home network devices; |
Indefinite because it does not specify the common commercial name for the type of devices. Applicant must further specify the common commercial name for its goods. |
home networking modules comprising electronic components being _________ {specify components, e.g., electric cabling panels, voice and data boards, video splitters, etc.} and associated wiring |
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Electronic security system for home network; |
Indefinite because it does not specify the common commercial name for the type of system. Applicant must further specify the common commercial name for its goods. |
electronic security system for home network comprising electronic components being _________ {specify components, e.g., electric cabling panels, voice and data boards, video splitters, etc.} and associated wiring |
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Home automation device; |
Indefinite because it does not specify the common commercial name for the type of device. Applicant must further specify the common commercial name for its goods. |
home automation device comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications |
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Downloadable smart phone application (software); |
Indefinite because it does not specify the common commercial name for the function, use, or type of application software. Applicant must further specify the common commercial name for its goods. Applicant must also remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods. |
downloadable smart phone application software for _________ {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use} |
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Cloud server; |
Too broad and could include goods in other international classes. For example cloud hosting provider services are classified in International Class 42, while computer servers for hosting cloud services are classified in International Class 9 are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
International Class 9: computer server for hosting cloud services
International Class 42: computer services, namely, providing a cloud-based virtual server for others |
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Server for home network system; |
Indefinite because it does not specify the common commercial name for the type of server. Applicant must further specify the common commercial name for its goods. |
network server for home network system |
|
Server for home automation; |
Indefinite because it does not specify the common commercial name for the type of server. Applicant must further specify the common commercial name for its goods. |
computer server for home automation |
|
Digital audio interface apparatus; |
Indefinite because it does not specify the common commercial name for the type of apparatus. Applicant must further specify the common commercial name for its goods. |
digital audio interface apparatus, namely, digital audio recorders and players |
|
Wireless audio/video receivers; |
Applicant must remove the forward slash from the identification. |
wireless audio and video receivers |
|
Wireless communication apparatus; |
Indefinite because it does not specify the common commercial name for the type of apparatus. Applicant must further specify the common commercial name for its goods. |
wireless communication apparatus, namely, wireless communication devices for voice, data, or image transmission |
|
Remote multi switches; |
Indefinite because it does not specify the common commercial name for the function, use, or type of switches. Applicant must further specify the common commercial name for its goods. |
remote telecommunications multi switches |
|
Oscillation sensor devices; |
Indefinite because it does not specify the common commercial name for the function, use, or type of sensors. Applicant must further specify the common commercial name for its goods. |
motion detectors in the nature of oscillation sensor devices |
|
Air pollution measuring devices; |
Indefinite because it does not specify the common commercial name for the function, use, or type of devices. Applicant must further specify the common commercial name for its goods. |
air pollution measuring devices, namely, air quality measurement apparatus in the nature of particle counters |
|
Air measuring apparatus; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
air quality measuring apparatus, namely, particle counters |
|
Dust measuring apparatus; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
dust measuring apparatus, namely, air quality measurement apparatus in the nature of particle counters |
|
Measuring apparatus not for medical purposes; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
measuring apparatus not for medical purposes, namely, _________ {indicate type of apparatus, e.g., pressure measuring apparatus, heliographic apparatus, etc.} |
|
Automatic control apparatus and instruments; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
automatic control apparatus and instruments, namely, _________ {indicate type of apparatus, e.g., automatic pressure control machines and instruments, automatic liquid-level control machines and instruments, automatic liquid-flow control machines and instruments, etc.} |
|
Electric power distribution apparatus; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
electric power distribution units |
|
Apparatus for improving power efficiency; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
apparatus for improving power efficiency, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment |
|
Apparatus for diagnosing electrical power installations; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods. |
apparatus for diagnosing electrical power installations, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment |
|
Apparatus for measuring/monitoring/analyzing electricity consumption; |
Indefinite because it does not specify the common commercial name for the function, use, or type of apparatus. Applicant must further specify the common commercial name for its goods.
Applicant must also remove the forward slashes from the identification. |
apparatus for measuring, monitoring, analyzing electricity consumption, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment |
|
Speaker systems; |
Indefinite because it does not specify the common commercial name for the function or use of the system or components of the system. Applicant must further specify the common commercial name for its goods. |
home speaker systems comprising audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, speakers, power conversion devices, power converters, and power inverters |
|
Electric audio and visual apparatus and instruments; |
Indefinite because it does not specify the common commercial name for the function, use or type of apparatus and instruments. Applicant must further specify the common commercial name for its goods. |
electric audio and visual apparatus and instruments, namely, audio-video receivers |
|
Remote air conditioning control devices; |
Indefinite because it does not specify the common commercial name for the function, use or type of device. Applicant must further specify the common commercial name for its goods. |
remote control for air conditioning devices |
|
Telemetric apparatus and instruments; |
Indefinite because it does not specify the common commercial name for the function, use or type of apparatus and instruments. Applicant must further specify the common commercial name for its goods. |
telemetric apparatus and instruments, namely, telemeters |
|
Telecommunication machines and implements; |
Indefinite because it does not specify the common commercial name for the function, use or type of machines and implements. Applicant must further specify the common commercial name for its goods. |
telecommunication machines and implements, namely, _________ {specify type of machines and implements, e.g., telecommunications towers, telecommunications exchangers, telecommunications cables, pickups, fuses, etc.} |
|
Computer software; |
Indefinite because it does not specify the common commercial name for the function, use or type of software. Applicant must further specify the common commercial name for its goods. |
computer software for _________ {specify use or purpose of software, e.g., wireless content delivery, administration of computer local area networks, controlling and improving computer and audio equipment sound quality, etc. and, if software is content- or field-specific, the field of use} |
|
Digital electronic controllers; |
Indefinite because it does not specify the common commercial name for the function, use or type of controllers. Applicant must further specify the common commercial name for its goods. |
digital electronic controllers for _________ {indicate goods being controlled} |
|
Plugs; |
Too broad and could include goods in other international classes. For example spark plugs are classified in International Class 7 and certain ear plugs are classified in International Class 10, while electrical plugs are classified in International Class 9. Applicant must further specify the common commercial name for its goods and classify its goods accordingly. |
electrical plugs |
|
Sockets, plugs and other contacts (electric connectors); |
Applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods |
electric connectors, namely, electric sockets, electric plugs, and electric contacts |
|
Solar cell panels; |
Indefinite because it does not specify the common commercial name for the function, use or type of the panels. Applicant must further specify the common commercial name for its goods. |
solar cell panels for production of electricity |
|
Solar power panel for generation; |
Indefinite because it does not specify the common commercial name for the function, use or type of the panels. Applicant must further specify the common commercial name for its goods. |
solar power panel for generation of electricity |
|
Computer application software; |
Indefinite because it does not specify the common commercial name for the function, use or type of software. Applicant must further specify the common commercial name for its goods. |
computer application software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use} |
|
Downloadable computer software applications; |
Indefinite because it does not specify the common commercial name for the function, use or type of the software applications. Applicant must further specify the common commercial name for its goods. |
downloadable computer software applications for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use} |
|
Application software for Televisions; |
Indefinite because it does not specify the common commercial name for the function, use or type of software. Applicant must further specify the common commercial name for its goods. |
computer application software for televisions, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use} |
|
Application software for smart phone; |
Indefinite because it does not specify the common commercial name for the function, use or type of software. Applicant must further specify the common commercial name for its goods. |
computer application software for smart phone, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use} |
|
Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; |
Indefinite because it does not specify the common commercial name for the function, use or type of software. Applicant must further specify the common commercial name for its goods. |
computer application software for smart phones, mobile phones, smart TV, and handheld electric communication device, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use} |
|
Computer software for the remote control of security apparatus; |
Indefinite because it does not specify the common commercial name for the function, use or type of security apparatus. Applicant must further specify the common commercial name for its goods. |
computer software for the remote control of security apparatus, namely, access control and alarm monitoring systems
|
|
Computer software for the remote control of office machines and equipment; |
Indefinite because it does not specify the common commercial name for the function, use or type of office machines and equipment. Applicant must further specify the common commercial name for its goods. |
computer software for the remote control of office machines and equipment, namely, _________ {indicate type of machines and equipment, e.g., photo-copying machines, document printers, fax machines, etc.} |
|
Computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; |
Indefinite because it does not specify the common commercial name for the function, use or type of electronic apparatus and instruments. Applicant must further specify the common commercial name for its goods. |
computer application software for the remote control of electronic apparatus and instruments in the nature of _________ {indicate type of apparatus and instruments, e.g., alarm systems, media players, etc.} and consumer electronic apparatus in the nature of _________ {indicate type of apparatus, e.g., alarm systems, media players, etc.} and electric lighting apparatus |
|
Software for network and device security; |
Indefinite because it does not specify the common commercial name for the function, use or type of the network, device, and software. Applicant must further specify the common commercial name for its goods. |
computer software for the management of computer network and wireless device security |
|
Software for mobile device management |
Indefinite because it does not specify the common commercial name for the function, use or type of the network, device, and software. Applicant must further specify the common commercial name for its goods. |
software for mobile device management, namely, managing electronic data |
Applicant may adopt the following complete identification of goods and services, if accurate:
International Class 7: Printers for use with computers, namely, 3D printers
International Class 9: Smart phones; portable communications apparatus, namely, handsets, walkie-talkies, satellite telephones and Personal Digital Assistants; _________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display for mobile phones; _________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display modules for mobile phones; semiconductor chips; application processors, namely, data processors; wearable smart phones; tablet PC; computer; document printers for use with computers; portable computers; notebook PC; computer hardware in the nature of computer monitors; computer and video monitors for commercial purpose; digital signage; wearable computer; television receivers; _________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display for television receivers; _________ {specify type of display, e.g., liquid crystal, LED, OLED, etc.} display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; wireless headsets for computers and mobile telephones; headset for computers and mobile telephones; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, stereo tuners, sound mixers, sound equalizers, audio recorders, and radios; apparatus for the recording, transmission, or reproduction of sound and images; computer network attached storage hardware; wireless chargers for electric batteries for smart phones; liquid crystal protective film for smart phones; downloadable smart phone ring tones; power supplies for smart phones; DVD player; media player in the nature of a digital optical disc player; handheld media players; handheld CD players; mobile phones cases; supporting audio speaker for mobile phones; flip cover for mobile phones; tablet computers cases; flip cover for tablet computers; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; computer mouse; keyboards; blank USB flash drives; universal serial bus (USB) dongle in the nature of wireless computer network adapters; digital set top boxes; digital cameras; network surveillance cameras; motion recognizing sensors; sensors for determining position, namely, gyro sensors using GPS functions; motion detectors; invader sensors, namely, motion detectors; privacy protection sensors, namely, alarm sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor for measuring distance, not for medical use; digital sensory devices, namely, _________ {specify type of digital sensor devices, e.g., humidity sensors, proximity sensors, pressure sensors, acceleration sensors, etc.}; object detecting sensors, namely, electrical sensor apparatus for sensing the presence or absence of objects by contact or pressure; sensor controllers, namely, _________ {specify type of sensor controllers, e.g., touch sensor controllers for controlling lighting systems, pressure sensors for controlling hydraulic or pneumatic systems, etc.}; pressure sensors; sensors for measuring _________ {specify type of quality or attribute measured, e.g., distance, length, proximity, etc.} of instruments, not for medical use; window opening and closing detecting sensors; door opening and closing detecting sensors; remote control apparatus, namely, remote controls for _________ {indicate specific devices, e.g. radios, televisions, stereos, etc.}; transmitters and receivers of electronic signals; adapters for wireless network access used to link computers to a telecommunications network; multi-function touch buttons, namely, _________ {specify common commercial name and/or purpose and function of the goods}; sensor station in the nature of an electric control panel for alarm sensors; audio speakers; digital door locks; remote controls for controlling electronic products, namely, _________ {indicate specific electronic products, e.g. radios, televisions, stereos, etc.}; home networking modules comprising electronic components being _________ {specify components, e.g., electric cabling panels, voice and data boards, video splitters, etc.} and associated wiring; electronic security system for home network comprising electronic components being _________ {specify components, e.g., electric cabling panels, voice and data boards, video splitters, etc.} and associated wiring; home automation device comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications; downloadable smart phone application software for _________ {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; interfaces and peripheral devices for computers; computer server for hosting cloud services; network server for home network system; computer server for home automation; digital audio interface apparatus, namely, digital audio recorders and players; wireless audio and video receivers; wireless communication apparatus, namely, wireless communication devices for voice, data, or image transmission; remote telecommunications multi switches; motion detectors in the nature of oscillation sensor devices; air pollution measuring devices, namely, air quality measurement apparatus in the nature of particle counters; measuring and control devices for air conditioning technology; air quality measuring apparatus, namely, particle counters; dust measuring apparatus, namely, air quality measurement apparatus in the nature of particle counters; weight scales not for medical purposes; measuring apparatus not for medical purposes, namely, _________ {indicate type of apparatus, e.g., pressure measuring apparatus, heliographic apparatus, etc.}; automatic control apparatus and instruments, namely, _________ {indicate type of apparatus, e.g., automatic pressure control machines and instruments, automatic liquid-level control machines and instruments, automatic liquid-flow control machines and instruments, etc.}; light switches; electric power distribution units; apparatus for improving power efficiency, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; lighting control apparatus; apparatus for diagnosing electrical power installations, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment; apparatus for measuring, monitoring, analyzing electricity consumption, namely, testing and measuring equipment for use in testing the performance and efficiency of power plant equipment; electric wire and cable; digital audio and video recorders and players; home speaker systems comprising audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, speakers, power conversion devices, power converters, and power invertershome speaker systems comprising audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, speakers, power conversion devices, power converters, and power invertershome speaker systems comprising audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, speakers, power conversion devices, power converters, and power inverters; electric audio and visual apparatus and instruments, namely, audio-video receivers; handheld multimedia players; modems; wireless routers; antennas for wireless communications apparatus; remote control for air conditioning devices; telemetric apparatus and instruments, namely, telemeters; remote control telemetering machines and apparatus; mobile phones; telecommunication machines and implements, namely, _________ {specify type of machines and implements, e.g., telecommunications towers, telecommunications exchangers, telecommunications cables, pickups, fuses, etc.}; remote control apparatus for controlling lighting; telecommunication converters; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software for _________ {specify use or purpose of software, e.g., wireless content delivery, administration of computer local area networks, controlling and improving computer and audio equipment sound quality, etc. and, if software is content- or field-specific, the field of use}; digital electronic controllers for _________ {indicate goods being controlled}; electrical plugs; electric connectors, namely, electric sockets, electric plugs, and electric contacts; solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels for production of electricity; solar power panel for generation of electricity; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; electric control devices for heating and energy management; computer hardware modules for use in internet of things electronic devices; computer application software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use}; downloadable computer software applications for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use}; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; computer application software for televisions, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use}; computer application software for smart phone, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use}; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV, and handheld electric communication device, namely, software for _________ {specify the function of the applications, e.g., use in database management, use in electronic storage of data, etc., and, if software is content- or field-specific, the field of use}; computer software for the remote control of security apparatus, namely, access control and alarm monitoring systems; computer software for the remote control of office machines and equipment, namely, _________ {indicate type of machines and equipment, e.g., photo-copying machines, document printers, fax machines, etc.}; computer application software for the remote control of electronic apparatus and instruments in the nature of _________ {indicate type of apparatus and instruments, e.g., alarm systems, media players, etc.} and consumer electronic apparatus in the nature of _________ {indicate type of apparatus, e.g., alarm systems, media players, etc.} and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; computer software for the management of computer network and wireless device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management, namely, managing electronic data
International Class 28: Wireless headsets, namely, gaming headsets adapted for use in playing video games; headset, namely, gaming headset adapted for use in playing video games; remote control apparatus, namely, video game interactive remote control units; remote controls for controlling electronic products, namely, video game interactive remote control units;
International Class 42: Computer services, namely, providing a cloud-based virtual server for others
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.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that may be classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
RESPONSE GUIDELINES
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.
/Steven W. Ferrell Jr./
Examining Attorney
Law Office 121
(571) 270-3424
steven.ferrell@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.
