Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 11/15/2016

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 26, 2016.

 

In a previous Office action dated March 25, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following:

 

      Trademark Act Section 2(d) for a likelihood of confusion with registered marks

 

In addition, applicant was required to satisfy the following requirements:

 

·       Amend the identification of goods

·       Comply with multiple-class application requirements, if necessary

·       Provide a copy of the foreign registration certificate

 

The following refusal has been partially obviated:

 

Trademark Act Section 2(d) for a likelihood of confusion with U.S. Reg. Nos. 2142987, 3257997, and 3257998

 

See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney is suspending action on the application for the reasons stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

PRIOR-FILED APPLICATION: The effective filing date of the pending application identified below precedes the filing date of applicant’s application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application was sent previously.

 

            - Application Serial No. 86299406

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REFUSALS AND REQUIREMENTS CONTINUED AND MAINTAINED:  The following refusals and requirements are continued and maintained:

 

• Section 2(d) Refusal – Likelihood of Confusion With U.S. Reg. Nos. 1592807, 2352649, 4097624, and 4546615
• Amendment to Identification of Goods Required
• Multiple-Class Application Requirements

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH U.S. REG. NOS. 1592807, 2352649, 4097624, AND 4546615

 

This refusal is continued and maintained as to the following goods with respect to U.S. Reg. Nos. 1592807, 2352649, 4097624, and 4546615.

 

Applicant’s Identification	Cited Registrations
Headset;	4097624
Ear phones;	4097624
Downloadable smart phone ringtones;	4546615
Optical disc player;	4097624
Blu ray player;	4097624
Motion detectors;	2352649
Invader sensors, namely, motion detectors;	2352649
Privacy protection sensors, namely, alarm sensors;	2352649
Sensor controllers;	2352649
Window opening and closing detecting sensors;	2352649
Door opening and closing detecting sensors;	2352649
Sensor station in the nature of a motion detector control panel;	2352649
Audio speakers;	4097624
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;	2352649
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;	2352649
Digital audio interface apparatus, namely, audio-receivers;	4097624
Oscillation sensor devices, namely, sensors for detecting light, sound, motion;	2352649
Computer software for controlling and managing access server applications;	1592807
Computer programs for connecting remotely to computers or computer networks;	1592807
Computer software;	4546615, 1592807

 

 

AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED

 

Select entries from applicant’s identification of goods remain indefinite and must be clarified.  See TMEP §1402.01 See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  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 USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

/Steven W. Ferrell Jr./

Examining Attorney

Law Office 121

(571) 270-3424

steven.ferrell@uspto.gov

 

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 Trademark Electronic Application System (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 11/15/2016 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.gov.uspto.report/, 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)  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

 

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.