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: 1/16/2019

 

This Office action is supplemental to and supersedes the previous Office action issued on December 14, 2018 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, additional entries in the identification of goods require amendments.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address the issue raised in this Office action.  Further, the following requirement has been satisfied:  provided a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUE that applicant must address:

 

            •  NEW ISSUE:  Identification of Goods Requirement

IDENTIFICATION OF GOODS REQUIREMENT

 

In applicant’s Response to Office Action dated December 16, 2018, applicant provided amendments to the identification of goods; however, additional entries in the identification of goods require amendments.

 

Regarding the entry “Autocrypted hard disk drives”, the wording “AUTOCRYPTED” in the identification of goods is the past tense of a registered mark not owned by applicant “AUTOCRYPT”; 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, such as hard disk drives featuring data encryption.  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. 5248481. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, 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 or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Additionally, the wording “Integrated decoder-receivers” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  Applicant must indicate the type of receivers, such as integrated decoder-receivers, namely, {e.g., radio, audio, and video receivers}.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (changes shown in bold):

 

International Class 9:  Computer operating system software; Computer utility programs; Computer software for encryption; Computer software for limiting access to data and computer programs stored on a personal computer; Application software, namely, computer software for relating to the electronic storage of personal data, security data and security data concerning buildings; Application software, namely, computer software for electronic access control devices for doors, windows, safes and locking and safety devices; Products of electrical and electronic locksmithing, namely, magnetic cards in the nature of magnetically encoded key cards, smart cards readers, code-based keyboards, biometric data reading and storage devices for securing access, electronic or electrical remote control devices, electric locks and electric and electronic keys, software for the operation of the aforesaid apparatus; Computer disc players; Hard disk drives; Digital versatile disc players; External hard disk drives; Hard disk drives featuring data encryption; Computer software for encrypting disk drives; Computer hardware and software for secure storage of data; Computer memories hardware; Televisions; Radios; Cases, stands, and lenses for photographic apparatus; Integrated decoder-receivers, namely, audio receivers; High fidelity apparatus, namely, sound recording apparatus for use in reproducing sound with little distortion; Loud speakers; Headphones; Telephones; Smartphones; Computers; Tablets, namely, tablet computers; Computer servers; Computer peripherals; Cables for computers, computer and telephone peripherals, audio and video apparatus; Printers, namely, photo printers and document printers; Fax machines; Measuring instrumentation and apparatus, namely, digitizers; Keyboards; Computer mouse; Computer monitors; Computer processors, namely, computer central processing units; Memory card and floppy disc drives; Memory cards; Memory expansion cards; MP3 players; Mousepad; Music, text, video and multimedia electronic data recorders; Modems; Routers, namely, network routers; Telecommunications and network routers; Computer, telematic and telephone terminals, namely, wireless Internet devices which provide telematic services and have a cellular phone function; Electronic docking stations; Blank USB flash drives; Computer data storage devices and media, namely, computer disc drives; Ethernet adapters for wireless network access; Wireless network expanders, namely, computer hardware in the nature of wireless network extenders; Devices for accessing wireless networks, namely, radio transmitters; Bags, cases, cases and covers especially adapted for computers, tablets, computer peripherals, telephones and music, text, video and multimedia data recorders

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods, 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

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.

 

 

RESPONSE GUIDELINES

 

Applicant must respond to the issue raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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.  

 

 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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 1/16/2019 FOR U.S. APPLICATION SERIAL NO. 88092713

 

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 1/16/2019, 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. 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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.