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: 2/23/2017

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion- LIMITED
• Prior-Filed Applications- Potential Likelihood of Confusion
• Identification of Goods Being Certified – Amendment Required
• Disclaimer Required

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3039012; 2740730; 1909253.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is WI-FI CERTIFIED VANTAGE presented in standard character form for certification use with the following goods limited to this refusal:

 

Class A: Wireless computer peripherals; video monitors; keyboards; computer mice; wireless adapters for computers; printers; notebook computers; laptop computers; video projection devices; computer docking stations; wireless communication devices for voice, data, or image transmission; speakers; optical disc players; home theater audio and video equipment; video game consoles; digital video recorders; digital media streaming devices; electronic docking stations; handheld game consoles; wireless display receivers; headphones; digital media hubs; digital media servers; digital media receivers; digital media streaming devices; wireless sensor beacons; radio transmitters and receivers; global positioning system (GPS) devices; electronic sensors for use in transmitting data and information to mobile, wireless, and handheld devices; vehicle-based electronic devices, namely, navigation systems and transmitters of vehicle information; remote control starters for vehicles; interactive digital and electronic billboards; interactive digital and electronic signage; in-vehicle media and entertainment systems; motor vehicle systems comprised of a vehicle-based electronic module for receiving traffic status information and providing directional guidance information in response thereto; motor vehicle diagnostic system comprised of a vehicle-based electronic module for transmitting vehicle diagnostic information via a global computer network; vehicle-based mobile digital computers, cameras, microphones, and computer monitors; vehicle-based electronic modules and computer hardware for receiving and transmitting traffic status information via wireless networks; wireless routers; wireless access points; cable, DSL, and broadband gateway devices; wireless local area networking products; wireless network range extenders; cooking ranges; dishwashers; refrigerators; light systems comprising light sensors and switches; thermostats; clothes washing machines; electric coffee makers; water heaters; electric rice cookers; electric slow cookers; electric pressure cookers; water filtration and purification apparatus; home and office automation systems comprising wireless controllers, controlled devices, and software for lighting, HVAC, irrigation, security, safety, and other home and office monitoring and control applications; home and office electrical power automation systems comprising wireless controllers, controlled devices, and software for appliances, lighting, HVAC, security, and other home and office electrical power monitoring and control applications; vacuum cleaners; garage door openers; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, energy and utility systems, security systems, and lighting systems; wireless temperature sensors; wireless moisture sensors; wireless motion sensors; wireless irrigation controllers; electronic door locks; cameras; security cameras; tablet computers; remote controllers for cameras; televisions; set-top boxes; consumer devices incorporating wireless networking functionality

 

The registered marks are as follows:

 

• U.S. Reg. No. 3039012 for the mark VANTAGE presented in standard character form for use with the following goods:

Class 009: Electronic devices, namely, video traffic detection systems and equipment comprised of analog or digital outdoor video cameras, image processors, video signal distribution devices, namely, short-range wireless transmitters and modems, and ancillary equipment, namely, video monitors, electrical power supplies/converters, and input/output distribution panels to detect the presence and motion characteristics of vehicles and traffic on roadways and intersections, and to provide outputs to traffic signal controllers

 

• U.S. Reg. No. 2740730 for the mark VANTAGE presented in typed form for use with the following goods:

 

Class 009: Electrical and electronic devices in the field of building automation systems, namely, building automation controllers, keypads, remote controls, RS-232 stations, power enclosure hubs, thermostat stations, relay stations, input stations, output stations, infra-red emitter stations, dimmer stations, LCD control stations, relay modules, dimming modules, remote infra-red receivers, DMX communication stations, radio frequency transceivers, and modems for operating building environmental condition systems, water systems, audio/video systems, and building amenities; Computer programs for building automation systems

 

• U.S. Reg. No.1909253 for the mark VANTAGE presented in typed form for use with the following goods:

 

Class 011: electric lighting fixtures

 

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

 

Further, the test for determining likelihood of confusion is the same for certification marks – the du Pont analysis.  In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007)); see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  However, because a certification mark owner does not use the mark itself, the likelihood of confusion analysis is based on a comparison of the mark as applied to the goods and/or services of the certification mark users, including the channels of trade and classes of purchasers.  In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955).

 

Comparison of Marks

 

Here applicant’s mark is WI-FI CERTIFIED VANTAGE presented in standard character form and the registered marks are all VANTAGE presented in typed or standard character form. For the reasons discussed below, applicant’s and registrants’ marks are similar for purposes of determining likelihood of confusion.

 

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).

 

Indeed, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).

 

In these matters, applicant’s mark incorporates the registered marks in their entireties within the applied-for mark WI-FI CERTIFIED VANTAGE. 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.

 

Accordingly, and in consideration of the above, applicant’s applied-for mark WI-FI CERTIFIED VANTAGE and the registered marks consisting of the term VANTAGE are similar for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Comparison of Goods

 

The goods and/or 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/or services 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 and/or 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).

 

Moreover, with respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration 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)). 

 

In this case, the identification 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 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)).

 

Regarding U.S. Reg. No. 3039012 for VANTAGE (vehicle goods)

 

Here, registrant’s goods and applicant’s goods being certified are related because both goods consist of traffic monitoring and vehicle sensing devices. Specifically, applicant’s goods limited to this specific refusal are as follows:

 

Class A: “video monitors; wireless communication devices for voice, data, or image transmission; wireless sensor beacons; radio transmitters and receivers; global positioning system (GPS) devices; electronic sensors for use in transmitting data and information to mobile, wireless, and handheld devices; vehicle-based electronic devices, namely, navigation systems and transmitters of vehicle information; remote control starters for vehicles; in-vehicle media and entertainment systems; motor vehicle systems comprised of a vehicle-based electronic module for receiving traffic status information and providing directional guidance information in response thereto; motor vehicle diagnostic system comprised of a vehicle-based electronic module for transmitting vehicle diagnostic information via a global computer network; vehicle-based mobile digital computers, cameras, microphones, and computer monitors; vehicle-based electronic modules and computer hardware for receiving and transmitting traffic status information via wireless networks; wireless motion sensors; consumer devices incorporating wireless networking functionality.” (emphasis added)

 

Registrant’s goods related to this refusal are as follows:

 

Class 009: “Electronic devices, namely, video traffic detection systems and equipment comprised of analog or digital outdoor video cameras, image processors, video signal distribution devices, namely, short-range wireless transmitters and modems, and ancillary equipment, namely, video monitors, electrical power supplies/converters, and input/output distribution panels to detect the presence and motion characteristics of vehicles and traffic on roadways and intersections, and to provide outputs to traffic signal controllers” (emphasis added)

 

All of the aforementioned certified goods of applicant are used specifically for vehicle monitoring and traffic monitoring which serve the same function as registrant’s vehicle and traffic monitoring and sensing devices. Indeed, both applicant’s and registrant’s goods consist of various electronic devices specifically for vehicles, namely, “video monitors” “transmitters” and “motion” devices that perform the same function.

 

Likewise, the application uses broad wording (such as “video monitors” “transmitters”  “wireless communication devices” etc.) to describe the goods (without intended purpose or industry listed) and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification that includes various electronic systems and devices for traffic and vehicle monitoring.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Indeed, applicant’s broadly worded video monitors, wireless sensor beacons, radio transmitters and receivers, electronic sensors for use in transmitting data and information, wireless motion sensors, and consumer devices incorporating wireless networking functionality for example, all encompass registrant’s vehicle and traffic specific transmitters, sensors, motion devices etc. because applicant’s certified goods may be used to monitor, transmit or sense traffic.

 

Accordingly and in consideration of the above, applicant’s goods being certified and registrant’s electronic traffic devices are related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Regarding U.S. Reg. No. 2740730 VANTAGE (automation systems)

 

Here, registrant’s goods and applicant’s goods being certified are related because both goods consist of electronic automation devices, systems and goods that are controlled by the automation systems or encompass registrant’s goods. Specifically, applicant’s goods limited to this specific refusal are as follows:

 

Class A: “Wireless computer peripherals; video monitors; keyboards; computer mice; wireless adapters for computers; printers; notebook computers; laptop computers; video projection devices; computer docking stations; wireless communication devices for voice, data, or image transmission; speakers; optical disc players; home theater audio and video equipment; video game consoles; digital video recorders; digital media streaming devices; electronic docking stations; handheld game consoles; wireless display receivers; headphones; digital media hubs; digital media servers; digital media receivers; digital media streaming devices; interactive digital and electronic billboards; interactive digital and electronic signage; wireless utility meters; industrial automation controls; wireless routers; wireless access points; cable, DSL, and broadband gateway devices; wireless local area networking products; wireless network range extenders;  cooking ranges; dishwashers; refrigerators; light systems comprising light sensors and switches; thermostats; clothes washing machines; electric coffee makers; water heaters; electric rice cookers; electric slow cookers; electric pressure cookers; water filtration and purification apparatus; home and office automation systems comprising wireless controllers, controlled devices, and software for lighting, HVAC, irrigation, security, safety, and other home and office monitoring and control applications; home and office electrical power automation systems comprising wireless controllers, controlled devices, and software for appliances, lighting, HVAC, security, and other home and office electrical power monitoring and control applications; vacuum cleaners; garage door openers; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, energy and utility systems, security systems, and lighting systems; wireless temperature sensors; wireless moisture sensors; wireless motion sensors; wireless irrigation controllers; electronic door locks; cameras; security cameras; tablet computers; remote controllers for cameras; televisions; set-top boxes; consumer devices incorporating wireless networking functionality” (emphasis added)

 

Registrant’s goods related to this refusal are as follows:

 

Class 009: “Electrical and electronic devices in the field of building automation systems, namely, building automation controllers, keypads, remote controls, RS-232 stations, power enclosure hubs, thermostat stations, relay stations, input stations, output stations, infra-red emitter stations, dimmer stations, LCD control stations, relay modules, dimming modules, remote infra-red receivers, DMX communication stations, radio frequency transceivers, and modems for operating building environmental condition systems, water systems, audio/video systems, and building amenities; Computer programs for building automation systems”

 

All of the aforementioned certified goods of applicant are used specifically for industrial, and home and office automation, which serve the same function as registrant’s building automation systems and controllers or encompass registrant’s goods. Indeed, both applicant’s and registrant’s goods consist of various automation system devices that are used to perform the same function of automating and controlling temperature, climate, audio video systems, communication and other functions of building automation.

 

Further, applicant uses broad wording (such as “video monitors” “cameras” “transmitters”  “wireless communication devices” etc.) to describe the goods (without intended purpose or industry listed) and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification that includes the more specifically intended building automation uses of registrant’s goods.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Likewise, all of applicant’s non-automation specific devices related to this refusal are also either what is being controlled through the automation systems (lights, security cameras printers, televisions, refrigerators, thermostats, clothes washing machines, water heaters etc.) or are goods that are part of the automation systems (video monitors, tablet computers, remote controllers for cameras etc.).

 

Accordingly and in consideration of the above, applicant’s goods being certified and registrant’s automation systems are related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Regarding U.S. Reg. No.1909253 VANTAGE (lighting)

 

Here, registrant’s goods and applicant’s goods being certified are related because both goods consist of electronic lighting. Specifically, applicant’s goods limited to this specific refusal are as follows:

 

Class A: “light systems comprising light sensors and switches; home and office automation systems comprising wireless controllers, controlled devices, and software for lighting, HVAC, irrigation, security, safety, and other home and office monitoring and control applications; home and office electrical power automation systems comprising wireless controllers, controlled devices, and software for appliances, lighting, HVAC, security, and other home and office electrical power monitoring and control applications; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, energy and utility systems, security systems, and lighting systems; consumer devices incorporating wireless networking functionality” (emphasis added).

 

Registrant’s goods related to this refusal are as follows:

 

Class 011: electric lighting fixtures

 

All of the aforementioned certified goods of applicant are used specifically lighting, which serve the same function as registrant’s electric lighting fixtures or encompass registrant’s goods. Indeed, both applicant’s and registrant’s goods consist of various lighting devices that are used as lighting or to control lighting.

 

Further, applicant uses broad wording such as “light systems” “software for lighting” “lighting” “energy and utility systems”, “lighting systems” and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification that includes the more narrow “electric lighting fixtures” of registrant’s goods.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Likewise, applicant’s “consumer devices incorporating wireless networking functionality” is so broad that a “device” with no identified use may include registrant’s “electric lighting fixtures”.

 

Accordingly and in consideration of the above, applicant’s lighting goods being certified and registrant’s electric lighting fixtures are related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

PRIOR-FILED APPLICATIONS – POTENTIAL LIKELIHOOD OF CONFUSION

 

In addition to the registered marks cited above, the filing dates of pending U.S. Application Serial Nos. 86958209, 86958223, and 86958199 (all from the same applicant) precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Indeed, the prior filed applications consist of the mark VANTAGE, which is entirely incorporated within applicant’s mark for use with electronic goods and services. 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 applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal and/or this advisory, applicant must also respond to the requirement(s) set forth below.

 

 

IDENTIFICATION OF GOODS BEING CERTIFIED – AMENDMENT REQUIRED

 

Applicant’s applied-for identification of goods being certified consist of the following:

 

Class A: Wireless computer peripherals; video monitors; keyboards; computer mice; wireless adapters for computers; printers; notebook computers; laptop computers; video projection devices; computer docking stations; wireless communication devices for voice, data, or image transmission; mobile hotspot devices; network storage devices; wearable computers; wearable computer peripherals; wearable motion tracking devices; wearable cameras; personal digital assistants; speakers; optical disc players; home theater audio and video equipment; video game consoles; digital video recorders; digital media streaming devices; electronic docking stations; handheld game consoles; wireless display receivers; headphones; digital media hubs; digital media servers; digital media receivers; digital media streaming devices; wearable GPS tracking and navigation devices; barcode scanners; patient monitors for monitoring and measuring vital signs; computer hardware for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data; chipsets; wireless sensor beacons; radio transmitters and receivers; global positioning system (GPS) devices; electronic sensors for use in transmitting data and information to mobile, wireless, and handheld devices; vehicle-based electronic devices, namely, navigation systems and transmitters of vehicle information; remote control starters for vehicles; interactive digital and electronic billboards; interactive digital and electronic signage; in-vehicle media and entertainment systems; motor vehicle systems comprised of a vehicle-based electronic module for receiving traffic status information and providing directional guidance information in response thereto; motor vehicle diagnostic system comprised of a vehicle-based electronic module for transmitting vehicle diagnostic information via a global computer network; vehicle-based mobile digital computers, cameras, microphones, and computer monitors; vehicle-based electronic modules and computer hardware for receiving and transmitting traffic status information via wireless networks; electronic pedometers; wireless utility meters; industrial automation controls; wearable mobile devices, namely, devices for hands-free use of mobile phones; mobile phones; smartphones; wireless routers; wireless access points; cable, DSL, and broadband gateway devices; wireless local area networking products; wireless network range extenders; cooking ranges; dishwashers; refrigerators; light systems comprising light sensors and switches; thermostats; clothes washing machines; electric coffee makers; water heaters; electric rice cookers; electric slow cookers; electric pressure cookers; water filtration and purification apparatus; home and office automation systems comprising wireless controllers, controlled devices, and software for lighting, HVAC, irrigation, security, safety, and other home and office monitoring and control applications; home and office electrical power automation systems comprising wireless controllers, controlled devices, and software for appliances, lighting, HVAC, security, and other home and office electrical power monitoring and control applications; vacuum cleaners; garage door openers; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, energy and utility systems, security systems, and lighting systems; wireless temperature sensors; wireless moisture sensors; wireless motion sensors; wireless irrigation controllers; electronic door locks; cameras; security cameras; tablet computers; portable electronic device for receiving and reading text and images and sound through wireless Internet access and for displaying electronically published materials, namely, books, journals, newspapers, magazines, multimedia presentations; remote controllers for cameras; televisions; set-top boxes; consumer devices incorporating wireless networking functionality

 

The identification of goods being certified includes duplicative wording “digital media streaming devices”, as highlighted in bold above, and clarification is required.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(a).  Applicant may either (1) modify one of these two identical descriptions of goods such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §§1402.01, 1402.01(a).  If modifying one of the duplicate identifications, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Further, applicant’s entry “consumer devices incorporating wireless networking functionality”, as highlighted in bold above, is indefinite and broad and must be clarified. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods.  In this case, however, because the nature of the goods is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Applicant’s goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “CERTIFIED” because it merely describes the purpose, or use of applicant’s certification mark, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

Indeed, “the message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner.  The placing of the mark on goods, or its use in connection with services, thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.” TMEP §1306.01(b). Further, the attached evidence from Merriam-Webster Dictionary shows that “CERTIFIED” means “having earned a certification”.  Therefore, the wording merely describes the purpose of use of applicant’s applied-for certification mark.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “CERTIFIED” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Examining Attorney

Law Office 121

571-270-1871

courtney.caliendo@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 2/23/2017 FOR U.S. APPLICATION SERIAL NO. 87235822

 

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 2/23/2017 (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.