Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 19, 2020

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

On July 16, 2019, action on this application was suspended pending the disposition of U.S. Registration No. 4300409 (ÜBERSCHALL).  The requisite maintenance documents were timely filed in the referenced registration. 

 

Additionally, the following refusal and requirement was maintained and continued as indicated in the Suspension Letter dated July 16, 2019:

 

•         Section 2(d) Refusal based on the Likelihood of Confusion with Registration No. 3558539 (SUPERSONIX)

•         Amended identification of “cables” requires further clarification because it could include goods in more than one class

 

Therefore, registration is FINALLY refused as follows.

 

SUMMARY OF ISSUES:

 

• Refusal under Trademark Act Section 2(d) – Likelihood of Confusion
• Requirement to Amend the Identification of Goods

In correspondence dated June 20, 2019 (the “Response”), applicant asserted that refusal for likelihood of confusion should be withdrawn with regard to U.S. Reg. No. 4300409, however,  Section 8 & 15 maintenance filings were accepted.  Therefore, applicant’s argument is not persuasive.  With regard to U.S. Reg. No. 3558539, applicant asserted that its amendment to the identification of goods was sufficient to obviate the likelihood of confusion refusal under Trademark Act Section 2(d).  Applicant’s arguments have been carefully considered and found unpersuasive. 

Therefore, registration of the applied-for mark is FINALLY refused because of a likelihood of confusion with the marks in U.S. Registration No. 4300409 (ÜBERSCHALL) and Registration No. 3558539 (SUPERSONIX).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

The applicant has applied to register the mark SUPERSONIC for a wide variety of electronics and electronic components including audio and video players, recorders and their accessories, speakers, amplifiers, loudspeakers, loudspeaker cabinets, computers, laptops, PDAs, computer accessories, cell phones, and televisions, among others.  Registration is refused because of a likelihood of confusion with Registration No. 4300409 for ÜBERSCHALL for “Audio equipment, namely, audio amplifiers, loudspeakers and loudspeaker cabinets” and Registration No. 3558539 for SUPERSONIX for “Hard disk drive duplication devices.”

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

 

 

 

 

Comparing the Marks. 

• Registration No. 4300409 (ÜBERSCHALL)

Applicant’s proposed mark, SUPERSONIC, is highly similar to Registration No. 4300409 for ÜBERSCHALL because ÜBERSCHALL translates to Supersonic in English. 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in German, which is a common, modern language in the United States.  See In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) (German).  Specifically, in addition to the evidence provided in the previous Office action, the attached evidence from babble.com and en.wikipedia.org shows the large number of U.S. consumers who speak this language.  See, http://www.babbel.com/en/magazine/how-many-people-speak-german-and-where-is-it-spoken; and http://en.wikipedia.org/wiki/German_language_in_the_United_States.

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the German language is a common, modern language spoken by an appreciable number of consumers in the United States.  Specifically, in addition to the evidence provided in the previous Office action, the attached evidence from translate.google.com shows the foreign word directly translates to the English word SUPERSONIC.  See, http://translate.google.com/#view=home&op=translate&sl=en&tl=de&text=SUPERSONIC.

Thus, it follows that the marks create a highly similar commercial impression.

• Registration No. 3558539 (SUPERSONIX)

Applicant’s proposed mark, SUPERSONIC, is highly similar to Registration No. 3558539 for SUPERSONIX because the only difference is in the last letter. 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

Here, applicant’s mark looks and sounds highly similar to the registered mark.  SUPERSONIX is merely an alternative spelling and phonetic equivalent to SUPERSONICS, which is the plural form of SUPERSONIC.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).  Thus, these marks also create a highly similar commercial impression.

Comparing the Goods

• Registration No. 4300409 (ÜBERSCHALL)

Registrant’s goods are identified as “Audio equipment, namely, audio amplifiers, loudspeakers and loudspeaker cabinets”. Applicant’s goods include a wide variety of electronics and electronic components including audio and video players, recorders and their accessories, speakers, amplifiers, loudspeakers, loudspeaker cabinets, computers, laptops, PDAs, computer accessories, cell phones, televisions, among others.

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

In this case, the goods in the application and registration are identical as to “loudspeakers”, and “loudspeaker cabinets”.  Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, these goods of the applicant and registrant are related.  

Additionally, applicant’s broadly worded “amplifiers” presumably encompasses all goods of the type described, including registrant’s “audio amplifiers”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, these goods of applicant and registrant are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).  Additionally, the goods of the parties have no restrictions as to channels of trade or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

Finally, the previously attached Internet evidence, consisting of pages from bestbuy.com, rocketfishproducts.com, and sony.com establish that the same entity commonly manufactures goods such as applicant’s and registrant’s amplifiers and loudspeakers, as well as a variety of other electronics including televisions, audio and video equipment, computers, laptops, cell phones and electronic accessories.  Thus, applicant’s additional goods are considered related to those of registrant for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

• Registration No. 3558539 (SUPERSONIX)

Registrant’s goods are identified as “Hard disk drive duplication devices”.  Applicant’s amendment to delete the goods identified as “Hard disk drive duplication devices” is insufficient to obviate the likelihood of confusion. Applicant’s amended identification of goods also includes “Computer hardware; Computer hardware and computer peripheral devices; Computer hardware and computer peripherals; Computer peripheral apparatus; Computer peripheral devices; Computer peripheral equipment; Computer peripherals; Computer peripherals and parts thereof; Computers and computer hardware; Computers and computer peripherals” as well as “External computer hard drives”.  The wording “Hard disk drive duplication devices” is encompassed by applicant’s broader wording because the registrant’s identified goods are peripherals.  See, http://encyclopedia2.thefreedictionary.com/computer+peripheral (defining “peripheral” as “Any input, output or storage device connected externally or internally to the computer's CPU, such as a monitor, keyboard, mouse, printer, hard disk, graphics tablet, scanner, joystick or paddle”).  Additionally, “Hard disk drive duplication devices” and “External computer hard drives” are related.  See, http://www.startech.com/HDD/Duplicators/4-Bay-USB-3-0-eSATA-Standalone-Hard-Drive-Duplicator-Dock~SATDOCK4U3RE and http://www.startech.com/HDD/Enclosures/2-Bay-External-RAID-Enclosure-Black~S3520BU33ER; http://www.bhphotovideo.com/c/search?Ntt=cineraid&N=0&InitialSearch=yes&sts=ma; and http://www.microcenter.com/search/search_results.aspx?Ntt=nexstar&searchButton=search.  In addition, these goods of the parties have no restrictions as to channels of trade or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s goods are also related to this registrant’s goods. 

In sum, upon encountering Supersonic, used in connection with the identified goods that include a wide variety of electronics and electronic components including audio and video players, recorders and their accessories, speakers, amplifiers, loudspeakers, loudspeaker cabinets, computers, laptops, PDAs, computer accessories, cell phones, televisions, and ÜBERSCHALL, used in connection with “Audio equipment, namely, audio amplifiers, loudspeakers and loudspeaker cabinets” or SUPERSONIX used in connection with “Hard disk drive duplication devices,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

IDENTIFICATION OF GOODS

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

In the Response, applicant proposed to amend the wording “HDMI Cables” to “Cables”.  That proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows: 

 

Adapter plugs; Adapters; All-in-one PCs; Amplifiers; Audio and video cassette recorders; Audio cables; Audio cassette and CD players; Audio cassette decks for automobiles; Audio cassette players; Audio cassette recorders; Audio electronic components, namely, surround sound systems; Audio headphones; Audio mixers; Audio recorders; Audio speaker enclosures; Audio speakers; Audio tape recorders; Audio-receivers and video-receivers; Audio-video receivers; Audiovisual receivers; Backup drives for computers; Bass amplifiers; Bass speakers; Blank USB flash drives; Cable connectors; Cable television converters; Cable television transmitters; Cables and fibers for the transmission of sounds and images; Cables for electrical and optical signal transmission systems; Cables for electrical or optical signal transmission; Cables, electric; Camcorders; Camera filters; Cameras; Carrying cases for cell phones; Cases for mobile phones; Cases for photographic apparatus; CD cases; CD players; Cell phone battery chargers; Cell phone cases; Cell phone covers; Cell phones; Cellular phones; Cellular telephone apparatuses; Cellular telephones; Chargers for batteries; Chargers for electric batteries; Charging appliances for rechargeable equipment; Compact disc players; Component video cables; Computer cables; Computer docking stations; Computer hardware; Computer hardware and computer peripheral devices; Computer hardware and computer peripherals; Computer keyboards; Computer keypads; Computer mice; Computer monitors; Computer peripheral apparatus; Computer peripheral devices; Computer peripheral equipment; Computer peripherals; Computer peripherals and parts thereof; Computer stylus; Computers; Computers and computer hardware; Computers and computer peripherals; Computers and instructional manuals sold as a unit; Connection cables; Converters; Cordless telephone apparatuses; Cordless telephones; DC/AC power converters; Desktop computers; Devices for hands-free use of mobile phones; Digital audio and video recorders and players; Digital audio players; Digital audio tape players; Digital audio tape recorders; Digital camera accessory in the nature of a digital photo viewer; Digital cameras; Digital cellular phones; Digital phones; Digital photo frames; Digital telephones; Digital video cameras; Digital video recorders; Digital voice recorders; DVD players; DVD recorders; DVD recording apparatus; Ear buds; Ear phones; Earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; Earphones; Earphones and headphones; Electric cords; Electric storage batteries; Electrical cables; Electrical cables and cord sets; Electrical cables for use in connections; Electrical cells and batteries; Electronic apparatus, namely, electronic display boards, plasma display boards, electronic display screens; Electronic cables; Electronic data recorders; Electronic device to charge and secure tablet PCs; Electronic docking stations; External computer hard drives; Global positioning system (GPS); GPS navigation device; GPS tracking devices; Guitar amplifier accessory, namely, a fitted face plate to affix to an amplifier for use with electric guitars; Guitar amplifiers; Handheld computers; Handheld personal computers; Hands free devices for mobile-phones; Headphones; Headsets for cellular or mobile phones; Headsets for mobile telephones; Headsets for telephones; Headsets for use with computers; Internet phones; Internet radios; Internet-ready televisions; Karaoke machines; Karaoke players; Keyboards; Laptop

computers; Laptops; LCD large-screen displays; LCD panels; Light emitting diode (LED) displays; Light emitting diodes (LEDs); Liquid crystal display (LCD) monitors; Liquid crystal display (LCD) projectors; Liquid crystal display (LCD) televisions; Liquid crystal displays; Loud speaker systems; Loud speakers; Loudspeaker cabinets; Loudspeaker systems; Loudspeakers; Loudspeakers with built in amplifiers; Loudspeakers, headphones, microphones and CD players; Microphones; Mobile computers; Mobile phones; Mobile radios; Mobile telephone accessories, namely, belt clips; Mobile telephone batteries; Mobile telephones; MP3 players; MP4 players; Netbook computers; Notebook and laptop computers; Notebook computer carrying cases; Notebook computer cooling pads; Notebook computers; PC digital video recorders; PC tablet mounts; PC tablet stabilizers; PC tablets; Pedometers; Personal computers; Personal data assistants; Personal digital assistant computers; Personal digital assistants; Personal digital assistants (PDA); Personal headphones for sound transmitting apparatuses; Personal headphones for use with sound transmitting systems; Personal stereos; Personal video recorders (PVRs); Pocket computers for note-taking; Pocket translators; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; Portable DVD players; Portable listening devices, namely, MP3 players; Portable media players; Portable photography equipment, namely, reflectors, tripods, light stands and supports and bags specially adapted for these goods; Portable radios; Portable telecommunication instant messaging devices; Portable telephones; Portable televisions; Portable vibration speakers; Portable video cameras with built-in videocassette recorders; Portable wrist-mounted digital electronic device for audio recording and audio playback; Portable handheld electronic digital video messengers for recording, storage, transmission or reproduction of visual, audio and data content; Power adapters; Power adapters for computers; Power amplifiers; Power cables; Power connectors; Projection screens; Racks for amplifiers; Racks for loudspeakers; Radio receivers and radio signal tuners; Radio receivers and transmitters; Radio sets; Radios; Radios and telephones; Receivers of electronic signals; Recording and playing devices for sound and image carriers; Remote control transmitter for radio-controlled devices; Scanners; Smartphones; Sound and picture recording apparatus; Sound and video recording and playback machines; Sound recording and sound reproducing apparatus and instruments; Sound recording apparatus; Sound reproducing apparatus; Sound reproduction apparatus; Sound systems comprising remote controls, amplifiers, loudspeakers and components therefor; Sound transmitting apparatus; Speaker enclosures; Speakerphones; Stereo amplifiers; Stereo cables; Stereo headphones; Stereo receivers; Stereo tuners; Sub-woofers; Subwoofers; Surveyors' levels; Survival suits, namely, insulated overall wet suits and dry suits; Tablet computer; Telecommunication towers; Telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Telephone answering apparatus; Telephone answering machines; Telephone apparatus; Telephone apparatus and receivers; Telephone headsets; Telephone receivers; Telephone recorders; Telephone sets; Telephone sets with screen and keyboard; Telephones; Television antennas; Television and video converters; Television monitors; Television monitors with television tuners; Television receivers; Television sets; Televisions; Televisions and monitors; Televisions and video recorders; Touch screens; Touchscreen monitors; Touchscreens; Tripods; TV monitors; Tweeters; Universal remote controls for home electronic devices, namely, televisions, VCR's, DVD players, stereo receivers, stereo amplifiers; Universal disc players; Video cables; Video cameras; Video capture cards; Video cassette recorders; Video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; Video disc players; Video recorders; Video recorders and video reproducing apparatus; Videorecorders; Videotape recorders; Wireless computer mice; Wireless computer peripherals; Wireless indoor and outdoor speakers; Wireless receivers and transmitters for portable media players; Wireless routers; Wireless telephones; Wireless television set for providing video conferencing and telephone service over the Internet; Wireless transmitters and receivers; Woofers; Qi wireless charging pad; HDMI Cables; Wi-Fi speakers; Smart Watch; Augmented reality game controller; Virtual reality headsets

 

However, the proposed amendment identifies the following goods and/or services: 

 

Adapter plugs; Electrical adapters; All-in-one PCs; Amplifiers; Audio and video cassette recorders; Audio cables; Audio cassette and CD players; Audio cassette decks for automobiles; Audio cassette players; Audio cassette recorders; Audio electronic components, namely, surround sound systems; Audio headphones; Audio mixers; Audio recorders; Audio speaker enclosures; Audio speakers; Audio tape recorders; Audio-receivers and video-receivers; Audio-video receivers; Audiovisual receivers; Bass amplifiers; Bass speakers; Blank USB flash drives; Cable connectors; Cable television converters; Cable television transmitters; Cables and fibers for the transmission of sounds and images; Cables for electrical and optical signal transmission systems; Cables for electrical or optical signal transmission; Cables, electric; Camcorders; Camera filters; Cameras; Carrying cases for cell phones; Cases for mobile phones; Cases for photographic apparatus; CD cases; CD players; Cell phone battery chargers; Cell phone cases; Cell phone covers; Cell phones; Cellular phones; Cellular telephone apparatuses; Cellular telephones; Chargers for batteries; Chargers for electric batteries; Charging appliances for rechargeable equipment; Compact disc players; Component video cables; Computer cables; Computer docking stations; Computer hardware; Computer hardware and computer peripheral devices; Computer hardware and computer peripherals; Computer keyboards; Computer keypads; Computer mice; Computer monitors; Computer peripheral apparatus; Computer peripheral devices; Computer peripheral equipment; Computer peripherals; Computer peripherals and parts thereof; Computer stylus; Computers; Computers and computer hardware; Computers and computer peripherals; Computers and instructional manuals sold as a unit; Connection cables; Converters; Cordless telephone apparatuses; Cordless telephones; DC/AC power converters; Desktop computers; Devices for hands-free use of mobile phones; Digital audio and video recorders and players; Digital audio players; Digital audio tape players; Digital audio tape recorders; Digital camera accessory in the nature of a digital photo viewer; Digital cameras; Digital cellular phones; Digital phones; Digital photo frames; Digital telephones; Digital video cameras; Digital video recorders; Digital voice recorders; DVD players; DVD recorders; DVD recording apparatus; Ear buds; Ear phones; Earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; Earphones; Earphones and headphones; Electric cords; Electric storage batteries; Electrical cables; Electrical cables and cord sets; Electrical cables for use in connections; Electrical cells and batteries; Electronic apparatus, namely, electronic display boards, plasma display boards, electronic display screens; Electronic cables; Electronic data recorders; Electronic device to charge and secure tablet PCs; Electronic docking stations; External computer hard drives; Global positioning system (GPS); GPS navigation device; GPS tracking devices; Guitar amplifier accessory, namely, a fitted face plate to affix to an amplifier for use with electric guitars; Guitar amplifiers; Handheld computers; Handheld personal computers; Hands free devices for mobile-phones; Headphones; Headsets for cellular or mobile phones; Headsets for mobile telephones; Headsets for telephones; Headsets for use with computers; Internet phones; Internet radios; Internet-ready televisions; Karaoke machines; Karaoke players; Keyboards; Laptop computers; Laptops; LCD large-screen displays; LCD panels; Light emitting diode (LED) displays; Light emitting diodes (LEDs); Liquid crystal display (LCD) monitors; Liquid crystal display (LCD) projectors; Liquid crystal display (LCD) televisions; Liquid crystal displays; Loud speaker systems; Loud speakers; Loudspeaker cabinets; Loudspeaker systems; Loudspeakers; Loudspeakers with built in amplifiers; Loudspeakers, headphones, microphones and CD players; Microphones; Mobile computers; Mobile phones; Mobile radios; Mobile telephone accessories, namely, belt clips; Mobile telephone batteries; Mobile telephones; MP3 players; MP4 players; Netbook computers; Notebook and laptop computers; Notebook computer carrying cases; Notebook computer cooling pads; Notebook computers; PC digital video recorders; PC tablet mounts; PC tablet stabilizers; PC tablets; Pedometers; Personal computers; Personal data assistants; Personal digital assistant computers; Personal digital assistants; Personal digital assistants (PDA); Personal headphones for sound transmitting apparatuses; Personal headphones for use with sound transmitting systems; Personal stereos; Personal video recorders (PVRs); Pocket computers for note-taking; Pocket translators; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; Portable DVD players; Portable listening devices, namely, MP3 players; Portable media players; Portable photography equipment, namely, reflectors, tripods, light stands and supports and bags specially adapted for these goods; Portable radios; Portable telecommunication instant messaging devices; Portable telephones; Portable televisions; Portable vibration speakers; Portable video cameras with built-in videocassette recorders; Portable wrist-mounted digital electronic device for audio recording and audio playback; Portable handheld electronic digital video messengers for recording, storage, transmission or reproduction of visual, audio and data content; Power adapters; Power adapters for computers; Power amplifiers; Power cables; Power connectors; Projection screens; Racks for amplifiers; Racks for loudspeakers; Radio receivers and radio signal tuners; Radio receivers and transmitters; Radio sets; Radios; Radios and telephones; Receivers of electronic signals; Recording and playing devices for sound and image carriers; Remote control transmitter for radio-controlled devices; Scanners; Smartphones; Sound and picture recording apparatus; Sound and video recording and playback machines; Sound recording and sound reproducing apparatus and instruments; Sound recording apparatus; Sound reproducing apparatus; Sound reproduction apparatus; Sound systems comprising remote controls, amplifiers, loudspeakers and components therefor; Sound transmitting apparatus; Speaker enclosures; Speakerphones; Stereo amplifiers; Stereo cables; Stereo headphones; Stereo receivers; Stereo tuners; Sub-woofers; Subwoofers; Surveyors' levels; Survival suits, namely, insulated overall wet suits and dry suits; Tablet computer; Telecommunication towers; Telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Telephone answering apparatus; Telephone answering machines; Telephone apparatus; Telephone apparatus and receivers; Telephone headsets; Telephone receivers; Telephone recorders; Telephone sets; Telephone sets with screen and keyboard; Telephones; Television antennas; Television and video converters; Television monitors; Television monitors with television tuners; Television receivers; Television sets; Televisions; Televisions and monitors; Televisions and video recorders; Touch screens; Touchscreen monitors; Touchscreens; Tripods; TV monitors; Tweeters; Universal remote controls for home electronic devices, namely, televisions, VCR's, DVD players, stereo receivers, stereo amplifiers; Universal disc players; Video cables; Video cameras; Video capture cards; Video cassette recorders; Video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; Video disc players; Video recorders; Video recorders and video reproducing apparatus; Videorecorders; Videotape recorders; Wireless computer mice; Wireless computer peripherals; Wireless indoor and outdoor speakers; Wireless receivers and transmitters for portable media players; Wireless routers; Wireless telephones; Wireless television set for providing video conferencing and telephone service over the Internet; Wireless transmitters and receivers; Woofers; wireless charging pad; Cables; wireless speakers; Smart Watch; Virtual reality headsets  

 

This portion of the proposed amendment is beyond the scope of the original identification because the wording “Cables” in the proposed amendment encompasses many different types of cables beyond those described by the original wording “HDMI Cables”, including goods that may be properly classified in other international classes.  Accordingly, the proposed amendment is rejected.

 

In addition, as stated in the Office action dated December 20, 2018, applicant must amend the wording “HDMI Cables” because the wording “HDMI” is a registered mark 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). 3268924. 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). If accurate, applicant may amend the wording “HDMI Cables” to “High-definition multimedia interface cables”.

 

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 

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e).  Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses.  See 37 C.F.R. §§2.17(e), 11.14(c)(1), (e). 

 

In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Michael Ebaugh/

Examining Attorney

Law Office 108

(571) 270-3341

michael.ebaugh@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 19, 2020 for

U.S. Trademark Application Serial No. 88101597

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Michael Ebaugh/

Examining Attorney

Law Office 108

(571) 270-3341

michael.ebaugh@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 19, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”