UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 10/19/2016

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 12, 2016.

 

In a previous Office action dated March 14, 2016, applicant was required to provide a copy of its foreign registration certificate, to amend its identification of goods, and to address the multi-class application requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the multi-class application requirements have been satisfied.  See TMEP §§713.02, 714.04.  Further, the trademark examining attorney continues and maintains the requirement to amend the identification of goods, as discussed further below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Applicant provided a copy of its foreign registration certificate in its September 12, 2016 response, which has raised a new issue that is discussed further below. 

 

Applicant must respond to all issues raised in this Office action and the previous March 14, 2016 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a).  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SUMMARY OF ISSUES:

• Particular Goods Exceed Scope of Foreign Registration – New Issue
• Identification of Goods Requirement – Continued and Maintained

 

PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION

 

Applicant provided a copy of its foreign registration certificate.  Particular wording in the U.S. application’s identification of goods is not acceptable because it exceeds the scope of the goods in the foreign registration upon which the U.S. application relies for a basis under Trademark Act Section 44.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44, an applicant is required to list only goods that are within the scope of the goods in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods as follows:  “electric controllers of LED lighting for indoor and outdoor lighting systems.” 

 

However, the foreign registration identifies the following goods:  “Light-emitting diodes (LED); LED lighting specially adapted for the illumination of computer hardware, computer peripherals, sound and audio apparatus and electronic devices, including mobile devices; light emitting diode displays; programmable light-emitting diodes [LED] controlled by computer software; computer software applications, downloadable; computer software development tools; application software; computer software; downloadable computer software, namely downloadable computer software for controlling LED lighting; computer controls for lighting apparatus.”

 

These goods in the U.S. application exceed the scope of the goods in the foreign registration because electric controllers for the LED lighting is not encompassed within any of the goods in the foreign registration, particularly, LED displays or programmable LEDs controlled by software.  Thus, these goods in the U.S. application are not acceptable and may not be amended to correspond with the goods in the foreign registration.

 

Therefore, applicant may respond by satisfying one of the following:

 

(1)       Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those goods in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant must address the following additional requirement.

 

IDENTIFICATION OF GOODS REQUIREMENT

 

Applicant was required to amend its identification of goods.  However, the proposed wording “computer application software and computer hardware for controlling lighting apparatus” in the identification of goods must be clarified because the application for computer application software is required to make these goods definite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate: 

 

Class 9: Light-emitting diodes (LED); LED lighting for illumination of computer hardware, computer peripherals, sound and audio apparatus, namely, earphones, headphones, microphones, headsets, loudspeakers, sound bars and electronic devices, namely, computers, laptops, tablets, keyboards, keypads, computer mice, mouse mats, web cameras, USB hubs, USB accessories, namely, cup warmers and fans, and mobile phones; electric controllers of LED lighting for indoor and outdoor lighting systems; programmable LED lighting controls controlled by computer software; computer software development tools; downloadable computer software for controlling LED lighting; computer software for controlling LED lighting; downloadable mobile application software for controlling LED lighting; computer application software for {specify items, e.g., mobile phones, handheld computers, etc.}, namely, software for controlling lighting apparatus; computer hardware for controlling lighting apparatus; all of the aforementioned goods primarily marketed for gaming use and/or gamers

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 or add goods not found in or encompassed by those in the original U.S. 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

 

/Elizabeth Shen/

Trademark Examining Attorney

Law Office 121

571-270-7111

elizabeth.shen@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 10/19/2016 FOR U.S. APPLICATION SERIAL NO. 86865117

 

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 10/19/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.