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: 11/26/2018

 

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

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

• Indefinite Identification of Goods – Amendment Required
• Information About Specimen and Use in U.S. Commerce Required
• Request for Additional Specimens
• Advisory – Trademark Counsel
• Advisory – Signature Constitutes Certification

 

INDEFINITE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

 

The wording “computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices” in the identification of goods is indefinite and must be clarified because the “aforesaid home electric powered devices” are not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the wording to specifically identify the home electric powered devices to which the wording is referring. 

 

Suggested Amendments

 

Applicant may substitute the following wording, if accurate: 

 

Class 9 –

 

Baby monitors; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Batteries; Battery chargers; Battery chargers for use with telephones; Cameras; Carrying cases for cell phones; 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, cell phones; Cases for smartphones; Cell phone backplates; Cell phone straps; Chargers for batteries; Computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control [specify the aforesaid home electric powered devices, e.g., baby monitors, etc.]; Data cables; Data processing equipment, namely, couplers; Earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; Earphones; Electric cables and wires; Electric connections and connectors; Electric door bells; Electrical plugs and sockets; Electronic memories; Fire alarms; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants; Headphones; Home and office automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications; Keyboards for mobile phones; Loudspeakers; Media players; Mobile phone cases featuring rechargeable batteries; Monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; Neoprene laptop covers; Portable photography equipment, namely, reflectors, tripods, light stands and supports and bags specially adapted for these goods; Power supply connectors and adaptors for use with portable electronic devices; Protection masks; Protective cases for smartphones; Protective display screen covers adapted for use with tablet computer ; Protective covers and cases for tablet computers; Renewable battery system to provide backup power; Screen protectors comprised of acrylic, tempered glass, plastic adapted for use with portable electronic devices; Smartphone mounts; Stabilizers for smartphones with protective cases; Telephone sets; Telephone and radio lightwave data links; Touchscreens; USB cables for cellphones; Vehicle mounted GPS sensor for determining the rate of motion for a vehicle; Video telephones; Wireless chargers; Wireless computer mice; Wireless broadband radios; Wireless cellular phone headsets; Wireless computer peripherals; Wireless electronic visitor chimes; Wireless electronic visitor signal chimes; Wireless headsets for smartphones; Wireless indoor and outdoor speakers; Wireless POS (point of service) devices; Wireless receivers and transmitters for portable media players; Wireless telephony apparatus; Cell phone battery chargers; Cell phone battery chargers for use in vehicles

 

Amendment Guidelines

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

INFORMATION ABOUT SPECIMEN AND USE IN U.S. COMMERCE REQUIRED

 

A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark).  15 U.S.C. §§1051, 1052, 1127.  A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce.  15 U.S.C. §1127. 

 

Based on the record evidence and analysis, no existing specimen submission appears to show the mark in actual use in commerce.  Therefore, to permit proper examination of the application, applicant must respond to the following questions and submit additional information for the record about the specimen(s) and how the mark as shown on the specimen(s) is in use in commerce with applicant’s goods.  See 37 C.F.R. § 2.61(b); TMEP § 814. This information is needed to determine if all of the goods have been “sold or transported in commerce” as required by the relevant provisions of the Trademark Act and to ascertain if the application is void.  15 U.S.C. §1127; 37 C.F.R. §2.71(d); see TMEP 1201.02(b).  Applicant must provide a full translation of any submitted material that is not in English.  37 C.F.R. § 2.61(b).

 

(1)            Applicant must submit, redacting the personal or private information of any buyer, copies of invoices, bills of sale, or other documentation of sales in U.S. commerce of (a) the goods bearing the proposed mark as provided as specimen submissions and (b) other listed goods in this application that also bear the proposed mark to be provided as specimen submissions in responding to the Request for Additional Specimen Submissions.

(2)            Applicant must specifically state whether the specimen or specimens show the applicant’s products, including the manner and placement of the proposed mark, as they are currently being sold to consumers in U.S. commerce.

(3)            If the goods shown in the specimen or specimens with the proposed mark are sold in physical stores, applicant must provide unedited digital images or photographs showing the goods bearing the proposed mark in store locations, the time and date taken, and the address of the store location.  If these goods are sold in another type of sales environment, applicant must provide evidence showing the goods for sale in that environment, and provide the address of any physical location.

(4)            If the information in the previous question about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.

(5)            If these goods are available for sale online, applicant must provide images of websites showing the goods for sale in direct association with the proposed mark, including the complete URL address of the website shown so that it can be accessed by the USPTO to permit proper and complete examination of this application. 

(6)            Applicant must specifically state for the record whether it has used its proposed mark continuously in commerce regulated by the U.S. Congress since the application filing date.

See 37 C.F.R. §2.61(b); TMEP §814.  For each webpage submission, either as a specimen or as supporting evidence, applicant must provide a digital copy of the entire webpages (including URL) from top to bottom, as rendered in an Internet browser, to permit proper and complete examination of this application and an accurate record of the entirety of the webpage submission.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the relevant information or the additional specimens of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

REQUEST FOR ADDITIONAL SPECIMENS

 

Given the wide variety and range of unrelated goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b).  37 C.F.R. § 2.61(b); see TMEP § 904.01(a).  Moreover, applicant must also support with verifiable evidence proper actual use in commerce of the mark for all goods requested here.  15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a); cf. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006) (“an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b)”).  The Trademark Act defines “commerce” as commerce that may be lawfully regulated by the U.S. Congress.   See 15 U.S.C. §1127.  “Use in commerce” means (1) the bona fide use of a mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods at their point of sale, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127. 

 

Please note that for every specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the goods.

 

Applicant should submit specimens demonstrating use of the mark on all of the following goods:

 

1.         Baby monitors;

 

2.         Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Carrying cases for cell phones; 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, cell phones; Cases for smartphones; Cell phone backplates; Cell phone straps; Mobile phone cases featuring rechargeable batteries; Neoprene laptop covers; Protective cases for smartphones; Protective covers and cases for tablet computers;

3.         Batteries;

4.         Cameras;

5.         Computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices;

6.         Data cables; Electric cables and wires;

7.         Data processing equipment, namely, couplers; Electric connections and connectors; Electrical plugs and sockets;

8.         Earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; Earphones; Headphones; Loudspeakers; Wireless indoor and outdoor speakers;

9.         Electric door bells; Wireless electronic visitor chimes; Wireless electronic visitor signal chimes;

10.       Electronic memories;

11.       Fire alarms;

12.       Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants; Protective display screen covers adapted for use with tablet computer; Screen protectors comprised of acrylic, tempered glass, plastic adapted for use with portable electronic devices;

13.       Home and office automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications;

14.       Keyboards for mobile phones; Wireless computer mice; Wireless computer peripherals;

15.       Media players;

16.       Monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; Portable photography equipment, namely, reflectors, tripods, light stands and supports and bags specially adapted for these goods;

17.       Protection masks; Renewable battery system to provide backup power;

18.       Smartphone mounts; Stabilizers for smartphones with protective cases;

19.       Telephone sets; Video telephones; Wireless telephony apparatus;

20.       Telephone and radio lightwave data links;

21.       Touchscreens;

22.       Vehicle mounted GPS sensor for determining the rate of motion for a vehicle;

23.       Wireless chargers;

24.       Wireless broadband radios;

25.       Wireless cellular phone headsets; Wireless headsets for smartphones;

26.       Wireless POS (point of service) devices;

27.       Wireless receivers and transmitters for portable media players.

If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b).  This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.

 

To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted:  (2) check the box next to the following statement:  “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

ADVISORY – TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

ADVISORY – SIGNATURE CONSTITUTES CERTIFICATION

 

A verified statement, which includes statements supported by a signed declaration under 37 C.F.R. §2.20, must be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant.  37 C.F.R. §2.193(e)(1); TMEP §804.04; see 37 C.F.R. §2.33(a).  The following persons are properly authorized:  (1) a person with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant or a general partner of a partnership applicant); (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of applicant; and (3) an attorney who is authorized to represent the applicant and to practice before the USPTO.  37 C.F.R. §2.193(e)(1); TMEP §804.04. 

 

37 C.F.R. §2.193(e)(1); TMEP §804.04.

 

Any party who presents a document to the USPTO is subject to Trademark Rule 11.18(b).  37 C.F.R. §11.18(b).  Thus, an attorney, applicant, or other party who signs or submits a document in connection with a trademark application is certifying that:

 

(1)       All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;

 

(2)       To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;

 

(3)       All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

 

(4)       All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.

 

See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).

 

Violating Trademark Rule 11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following:  rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO. 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 requirements 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.  

 

 

 

/Jacob Vigil/

Examining Attorney

Law Office 113

(571) 270-3586

Jacob.Vigil@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 11/26/2018 FOR U.S. APPLICATION SERIAL NO. 88063891

 

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 11/26/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

/Jacob Vigil/

Examining Attorney

Law Office 113

(571) 270-3586

Jacob.Vigil@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.