To: | Specialty Equipment Market Association (trademarks@wc-b.com) |
Subject: | U.S. Trademark Application Serial No. 88011640 - PRI DIRECT - SEMA |
Sent: | October 15, 2019 11:11:13 AM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88011640
Mark: PRI DIRECT
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Correspondence Address: Webster, Chamberlain & Bean, LLP |
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Applicant: Specialty Equipment Market Association
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Reference/Docket No. SEMA
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 15, 2019
This Office action is in response to applicant’s communication filed on September 18, 2019. After additional review and before the examining attorney addresses applicant’s argument regarding the descriptiveness of the letters PRI, the applicant must address the following.
IDENTIFICATION OF GOODS IN CLASS 9
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may adopt the following wording, if accurate:
“Downloadable computer application software for mobile phones, namely, software for use in the automotive field for the purpose of an industry directory, product and supplier sourcing and tradeshow attendance” in International Class 9
“Providing temporary use of on-line non-downloadable software for mobile phones, namely, software for use in the automotive field for the purpose of an industry directory, product and supplier sourcing and tradeshow attendance” in International Class 42.
Until such time that the above issue is resolved, the following requirement is herein continued and maintained: the requirement for a disclaimer of the acronym PRI.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
How to respond. Click to file a response to this nonfinal Office action
/Midge F. Butler/
Trademark Attorney
Law Office 107
571 272 9137
midge.butler@uspto.gov
RESPONSE GUIDANCE