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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 6/5/2017

 

On November 15, 2016, action on this application was suspended pending the disposition of U.S. Application Serial No. 86299406.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

 

SUMMARY OF ISSUES:

·             Section 2(d) Refusals – Likelihood of Confusion – This Partial Refusal Applies Only to the Goods Specified Therein

• Amendment to Identification of Goods Required
• Multiple-Class Application Requirements
• Foreign Registration Certificate Required

 

 

SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION – THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The stated refusal refers to the following goods and does not bar registration for the other goods:  “Headset; Ear phones; Downloadable smart phone ringtones; Optical disc player; Blu ray player; Motion detectors; Invader sensors, namely, motion detectors; Privacy protection sensors, namely, alarm sensors; Sensor controllers; Window opening and closing detecting sensors; Door opening and closing detecting sensors; remote control starters for smart phones; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons being parts for smart phones; Sensor station in the nature of a motion detector control panel; Audio speakers; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; 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; Interfaces and peripheral devices for computers; Digital audio interface apparatus, namely, audio-receivers; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1592807, 2352649, 4097624, 4546615, and 4978614.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously and currently attached registrations.

 

Applicant’s mark is LIBRA for the relevant goods “Headset; Ear phones; Downloadable smart phone ringtones; Optical disc player; Blu ray player; Motion detectors; Invader sensors, namely, motion detectors; Privacy protection sensors, namely, alarm sensors; Sensor controllers; Window opening and closing detecting sensors; Door opening and closing detecting sensors; remote control starters for smart phones; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons being parts for smart phones; Sensor station in the nature of a motion detector control panel; Audio speakers; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; 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; Interfaces and peripheral devices for computers; Digital audio interface apparatus, namely, audio-receivers; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software.”

 

The cited registrations are as follows

 

LIBRA (Reg. No. 1592807) for “computer programs and instruction manuals sold therewith, for use in engineering applications.”

 

LIBRA (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.”

 

LIBRATONE (Reg. No. 4097624) for the relevant goods “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.”

 

LIBRA EORZEA (Reg. No. 4546615) for the relevant goods “computer game software; video game software; downloadable musical sound recordings; downloadable ring tones for mobile phones.”

 

LIBRA (Reg. No. 4978614) for the relevant goods and services “computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments; computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments of virtual currency holdings” and “providing temporary use of on-line non-downloadable software for tax planning, tax calculation, and tax return preparation and filing; software as a services (SAAS) services featuring software for preparing and filing of tax returns; software as a service (SAAS) services featuring software to calculate and charge sales tax and to create reports to pay sales tax to appropriate tax agencies; providing temporary use of online non-downloadable software for processing tax payments; providing temporary use of online, non-downloadable mobile application software for tax planning, tax calculation, and tax return preparation and filing. providing temporary use of non-downloadable software to pre-populate tax forms with tax data from online banking accounts; maintenance of on-line databases for others, consisting of database integration services and data integration services for financial institutions to integrate tax related data with online banking data; software as a service (SAAS) services featuring software for preparing and filing of tax return.”

 

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 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 services, and similarity of the trade channels of the goods and 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.

 

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.  For instance, 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) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); 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).

 

Reg. Nos. 1592807, 2352649, and 4978614

 

In the present case, applicant’s mark is LIBRA and registrants’ marks are LIBRA.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services.  Id.

 

            Reg. Nos. 4097624 and 4546615

 

In this case, applicant’s mark is LEO and the wording in registrants’ marks are LIBRATONE and LIBRA EORZEA, respectively.  Applicant’s mark is entirely incorporated within registrants’ marks, and applicant has simply removed the additional wording from the registered marks.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.  Furthermore, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered marks, and there is no other wording to distinguish it from the registered marks.

 

Therefore, applicant’s mark and registrants’ marks share the same commercial impression and are confusingly similar.

 

Comparison of Goods and Services

 

The goods and services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] 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).

 

With respect to applicant’s and registrants’ goods and services, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registrations at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and services 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 and services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

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 and services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the both the application and registrations use broad wording to describe the goods and this wording is presumed to encompass all goods and services of the type described, including those in applicant’s and registrants’ more narrow identification entries.  Specifically, the chart below shows the identification entries in the application and each registration that encompass or are otherwise highly related to one another.

 

 

Accordingly, the goods and services of applicant and registrants are considered related for purposes of the likelihood of confusion analysis. 

 

Because the marks are confusingly similar and the goods and services 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 “Headset; Ear phones; Downloadable smart phone ringtones; Optical disc player; Blu ray player; Motion detectors; Invader sensors, namely, motion detectors; Privacy protection sensors, namely, alarm sensors; Sensor controllers; Window opening and closing detecting sensors; Door opening and closing detecting sensors; remote control starters for smart phones; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons being parts for smart phones; Sensor station in the nature of a motion detector control panel; Audio speakers; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; 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; Interfaces and peripheral devices for computers; Digital audio interface apparatus, namely, audio-receivers; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software.”

 

Applicant may respond to the stated refusals by submitting evidence and arguments against the refusals.  In addition, applicant may respond by doing one of the following:

 

(1)       Deleting the goods to which the refusal pertains; or

 

(2)       Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

However, 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 remain indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Furthermore, select entries from the applicant’s identification of goods still need clarification because they are too broad and could include goods classified in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

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.  Suggested changes are displayed as underlined wording and punctuation.  A blank underline ( ______ ) indicates an area applicant must fill-in following the requirements in the curly-brackets to the right of the blank underline.  Applicant may substitute the wording contained within the table for each indefinite and broad entry, if accurate.

 

 

Applicant may adopt the following complete identification of goods, if accurate, with changes underlined:

 

International Class 9:    Smart phones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones and personal digital assistants; LCD display for mobile phones; LCD display modules for mobile phones; Semiconductor chips; Mobile application processors, namely, data processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Computer monitors; Television 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; headset for computers and mobile telephones; Wireless headset for mobile phones; Ear phones; Computer network attached storage hardware; Liquid crystal protective film for smart phones; Downloadable smart phone ringtones; Power supplies for smart phones; Optical disc player; media player in the nature of a digital optical disc player; Mobile phones cases; Flip cover for mobile phones; Tablet computers cases; Flip cover for tablet computers; Mouse being a computer peripheral; Keyboards; blank USB flash drives; Universal serial bus (USB) Dongles being wireless network adapters; Digital set top boxes; 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 finders; electronic devices which detect the presence of occupants and control the lighting system accordingly; object detecting sensor composed of chemical and heat sensors for the detection of explosives; 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 being parts of gesture, temperature measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; remote control starters for smart phones; Transmitters and receivers of electronic signals; adapters for wireless network access used to link computers to a telecommunications network; Multi-function touch buttons being parts for smart phones; Sensor station in the nature of a motion detector control panel; Audio speakers; Digital door locks; Remote controls for controlling electronic products in the nature of televisions, stereos, microwave ovens, refrigerators; Home network devices, namely, virtual private network hardware; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; 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; 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, audio-receivers; Wireless communication apparatus, namely, wireless communication devices for voice, date or image transmission; remote telecommunications multi switches; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; 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, particle counters; Weight scales not for medical purposes; Measuring apparatus not for medical purposes, namely, rain gauges, bevels, digitizers; Modems; Wireless routers; Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments, namely, wireless Internet devices which provide telematic services and have a cellular phone function; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements, namely, telecommunications transmitters; 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}; Computer hardware modules for use in internet of things electronic devices

 

International Class 28:  headset, namely, gaming headset adapted for use in playing video games

 

International Class 42:  computer services, namely, providing a cloud-based virtual server for others

 

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(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.  See TMEP §1402.04.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 are classified in at least 3 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

RESPONSE GUIDELINES

 

This Office action addresses a new examination issue and jurisdiction remains with the trademark examining attorney; therefore, filing an appeal with the Trademark Trial and Appeal Board would be considered premature at this time.  See 37 C.F.R. §2.141(a); TMEP §§714.05 et seq.  Applicant must respond on the merits to the trademark examining attorney. 

 

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 refusals and/or requirements 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 $125 per class of goods.  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 or e-mail 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.

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/5/2017 FOR U.S. APPLICATION SERIAL NO. 86837226

 

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 6/5/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.