To: | 8834199 Canada Inc. (tmdocketing@bluefilamentlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87840767 - IFLY - BLG-0314/US |
Sent: | 6/1/2018 11:04:20 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87840767
MARK: IFLY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: 8834199 Canada Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/1/2018
INTRODUCTION
SEARCH RESULTS FROM USPTO DATABASE FOR CONFLICTING MARKS
SUMMARY OF ISSUES:
· Prior-filed Applications—Advisory
· Classification and Identification Amendment Required
· Multi-class Application—Advisory
PRIOR FILED APPLICATIONS—ADVISORY
The filing dates of pending U.S. Application Serial Nos. 87153701, 86779153, 87467418, and 87716652 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. 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.
CLASSIFICATION AND IDENTIFICATION AMENDMENT REQUIRED
Classification Amendment
Applicant has classified “cases adapted for… portable computer gaming machines” in International Class 9; however, the proper classification is International Class 28. Therefore, applicant may respond by (1) adding International Class 28 to the application and reclassifying these goods in the proper international class, (2) deleting “cases adapted for… portable computer gaming machines” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Identification Amendment
The wording “Tech accessories, namely, headphones, flashlights” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass flashlights for use in photography in Class 9, or flashlights other than for photography purposes in Class 11. Applicant must amend its identification to indicate explicitly the type of flashlights it provides.
The wording “USB adapters, namely, electrical adapters” in the identification of goods is indefinite and must be clarified because it is overly vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the current wording makes unclear the nature of the goods provided. Applicant must amend its identification to indicate this explicitly.
The wording “electronic luggage trackers in the nature of computer hardware for tracking luggage and computer bags” in the identification of goods is indefinite and must be clarified because it is overly vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the current wording makes unclear the type of computer hardware applicant provides for tracking purposes. Applicant must amend its identification to indicate this explicitly.
Suggested Wording
If accurate, applicant may adopt the following wording and classes:
Class 9: Tech accessories, namely, headphones and flashlights for use in photography; electronic travel accessories, namely, power adapters, battery chargers for use with mobile devices, battery chargers for small electric and electronic travel accessories, and worldwide international adapters, namely, power adapters; electronic accessory travel cases, namely, cases adapted for mobile phones, computers, tablets, and cameras; electronic travel accessories, namely, travel electric cords; electrical adapters in the nature of USB cable adapters; computer stylus; portable electronics cases in the nature of bags and cases specially adapted for electronic equipment, namely, mobile phones, computers, keyboards and tablets; portable audio speakers; travel headphones and earphones; portable luggage scales; biometric locks in the nature of biometric fingerprint locks for travel cases and luggage; wireless speakers; mobile device case, namely, cases for mobile computers, phones, cameras and tablets; portable power packs in the nature of rechargeable batteries for use with mobile phones, computers, and tablets; electronic luggage trackers in the nature of computer hardware, namely, a GPS tracker for tracking luggage and computer bags; electronic locks for luggage; ear plugs for divers
Class 11: Flashlights
Class 28: electronic accessory travel cases, namely, cases adapted for portable computer gaming machines
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.
Applicant should additionally note the advisory below.
MULTI-CLASS APPLICATION—ADVISORY
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@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.