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: 5/16/2016

 

 

 

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. 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.

 

 

No Conflicting Marks  

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, the applicant must address the following informalities.

 

 

Identification of Goods

Applicant filed a TEAS Plus application that identified one or more goods and/or services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding goods.  At the time of filing, a TEAS Plus application must include an identification of goods and/or services from the ID Manual.  TMEP §819.01(g); see 37 C.F.R §2.22(a)(8).  By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual.  See TMEP §819.01(g). 

 

Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $50 per class.  See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04.  The additional fee is required even if applicant later satisfies this requirement by deleting the unacceptable wording in the identification.  TMEP §819.01(g).

 

The wording at issue, “Screen protectors comprised of mobile phones, tablets, personal digital assistants, laptops adapted for use with portable electronic devices,” in the identification of goods is indefinite and must be clarified because the inserted wording is clearly inappropriate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate.

 

 

Cases adapted for mobile phones; Cases adapted for mobile phones; Cases for mobile phones; Cases for mobile phones; Cellular phone accessory charms; Mobile phone cases featuring rechargeable batteries; Mobile telephone accessories, namely, belt clips; Protective cases for smartphones; Protective covers and cases for cell phones, laptops and portable media players; Protective covers and cases for tablet computers; Protective covers and cases for cell phones, laptops and portable media players; Protective covers and cases for tablet computers; Protective covers for electronic reading devices; Protective covers for smartphones; Protective sleeves for laptop computers; Protective carrying cases for portable music players; Protective carrying cases specially adapted for personal digital assistants (PDA); Protective covers and cases for cell phones, laptops and portable media players; Protective covers and cases for tablet computers; Protective display screen covers adapted for use with mobile phones, tablets, personal digital assistants, laptops ; Stabilizers for PC tablets with protective cases; Stabilizers for smartphones with protective cases; Wireless cellular phone headsets; Wireless chargers; Wireless headsets for smartphones; Adjustable smartphone and PC tablet stabilizers and mounts; Carrying cases for mobile computers; Carrying cases for cell phones; Carrying cases specially adapted for electronic equipment, namely, mobile phones, tablets, personal digital assistants, laptops; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Cell phone cases; Cell phone auxiliary cables; Cell phone backplates; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; Cell phone cases; Cell phone covers; Cell phone faceplates; Cell phone straps; Cellular phone accessory charms; Cellular phone accessory charms; Clear protective covers specially adapted for personal electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Decorative charms for cellular telephones; Decorative ornaments for cellular telephones; Display screen protectors for providing shade and privacy specially adapted to electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, tablets, personal digital assistants, laptops; Fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Head-clip cell phone holders; Headsets for cellular or mobile phones; Leather protective covers specially adapted for personal electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Mobile phone cases featuring rechargeable batteries; Mobile phone cases featuring rechargeable batteries; Mobile phone straps; PC tablet stabilizers; Protective covers and cases for cell phones, laptops and portable media players; Screen protectors comprised [specify the material the screen protectors are made of, e.g., acrylic, plastic] adapted for use with portable electronic devices; Smartphone stabilizers; Specialty holsters adapted for carrying personal electronic devices, namely, mobile phones, tablets, personal digital assistants, laptops; Stabilizers for PC tablets with protective cases; Wireless cellular phone headsets; Wireless cellular phone headsets in International Class 009.

 

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 and/or services 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.

 

 

Questions Regarding Office Action

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.

 

 

 

 

 

/allison holtz/

Allison Holtz

Trademark Attorney

allison.holtz@uspto.gov

571.272.9383

 

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 5/16/2016 FOR U.S. APPLICATION SERIAL NO. 86885458

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/16/2016, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/allison holtz/

Allison Holtz

Trademark Attorney

allison.holtz@uspto.gov

571.272.9383

 

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.