To: | CodeSource, LLC (kirby.drake@klemchuk.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88050424 - POINTER - 2010.0016 |
Sent: | 5/30/2019 10:23:22 PM |
Sent As: | ECOM109@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. 88050424
MARK: POINTER
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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: CodeSource, LLC
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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: 5/30/2019
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.
INTRODUCTION
Applicant’s response of May 9, 2019 to the office action of November 9, 2019, has been reviewed and the following determinations have been made.
The Section 2(d) refusal is continued for the reasons provided below. The requirement to amend the identification is continued. Applicant should note the new requirement to delete reference to a third-party registration in the identification. Applicant should note the new requirement for additional information regarding the goods.
Summary of Issues: (*) Indicates Issues Applicant Must Address:
* Section 2(d) Refusal (continued)
* Identification of Goods (new & continued)
* Request for Information (new)
SECTION 2(D) REFUSAL (continued)
In the previous office action, registration was refused because of a likelihood of confusion with the mark in U.S. Registration No. 1919434. In response to this refusal, applicant argues it has amended the identification of goods to clarify that the goods are not sufficiently related to create a likelihood of confusion. This argument has been considered but is not persuasive in light of the attachments provided in applicant’s response which indicate that the goods are “transmitters” for communicating location. Registrant’s goods are transmitters for transmitting location information. Thus, applicant’s and registrant’s goods are highly similar and likely to travel in the same channels of trade. Thus, because the goods are similar and provided in the same channels of trade, the refusal is continued.
IDENTIFICATION OF GOODS (new & continued)
In the previous office action, applicant was required to clarify the nature of the goods and classify them accordingly. In applicant’s response, applicant amended the identification to read as follows:
Electronic devices, namely transmitters, positioned at ingress, egress or arbitrary checkpoints to communicate location and other information related to Bluetooth low energy (BLE) sensor tags crossing the threshold of the transmitters
The identification as amended is unacceptable because it includes the registered trademark BLUETOOTH® not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No(s). 2909356; 4818162; 2911905; and 4818161.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
The identification is also unacceptable because it exceeds the scope of the original identification. Specifically, some of the limitations in the original identification Asset tracking and management tags are omitted from the amended identification. Accordingly, applicant must amend the identification to (1) delete the registered trademark and substitute generic wording and (2) include the limitations from the original identification.
The following is suggested, if accurate:
International Class 9 Locating devices for use with asset tracking and management tags, namely, electronic transmitters which can be positioned at ingress, egress or arbitrary checkpoints to communicate location and receive other information from low energy wireless sensor tags that come within range of the transmitters
REQUEST FOR ADDITIONAL INFORMATION
To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
In addition, applicant must respond to the following question(s):
1. Can applicant’s goods transmit information?
2. Can applicant’s goods transmit location information?
3. Can applicant’s goods be used to locate an asset?
4. Can applicant’s goods be used to determine the location of a vehicle or automotive asset?
5. Can applicant’s goods be used to locate a vehicle or automotive asset?
6. Do any of applicant’s goods use battery power or have an emergency battery backup?
7. Are applicant’s goods used in conjunction with any other equipment? If yes, please list or specify the other equipment.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
ASSISTANCE
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Deborah Lobo/
Trademark Examining Attorney
Law Office 109
(571) 272-3263
deborah.lobo@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.