Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 11, 2019

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on June 10, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal(s):  Partial Identification of Goods Exceeds Scope of Foreign Registration – Refusal – CLASS 009.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated January 03, 2019, the trademark examining attorney issued the following:

 

• Specimen Refusal – Use & Matching – Classes 009 & 028
• Mark Description – Amendment Required
• Foreign Registrations Documents – Required

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  Mark Description and Foreign Registration Documents Required.  See TMEP §713.02. 

However, the specimen issue is continued and maintained for the reasons discussed below alongside the new scope issue also discussed below.

 

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

 

• NEW ISSUE: Partial Identification of Goods Exceeds Scope of Foreign Registration – Refusal – CLASS 009
• CONTINUED & MAINTAINED: Specimen Refusal – Use & Matching Class 009 & 28

 

Applicant must respond to all issues raised in this Office action and the previous January 03, 2018 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).

 

 

NEW ISSUE: PARTIAL IDENTIFICATION OF GOODS EXCEEDS SCOPE OF FOREIGN REGISTRATION – REFUSAL – CLASS 009

 

NOTE THIS ISSUE ONLY PERTAINS TO THE GOODS DISCUSSED HEREIN IN CLASS 009.

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods and/or services as follows:  “Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.” The goods that EXCEED the scope of the foreign registration are all the applied-for Class 009 goods except “audio speakers” and “speakers” Thus, the goods that exceed the scope of the foreign registration are: “Consumer electronic products, namely, audio amplifiers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, power conversion devices, power converters, and power inverters.”

 

However, the foreign registration identifies the following goods and/or services:  “Electronic tablets; Electronic notebooks; Electronic telephones; Electronic pens; Electronic tags; Electronic scales; Smartphones; Cases for smartphones; Covers for smartphones; Wrist-mounted smartphones; Docking stations for smartphones; Protective covers for smartphones; Wireless headsets for smartphones; Smartphones in the shape of a watch; Selfie. sticks used as smartphone accessories; Watches that communicate data to smartphones; Digitiser pads; Touch pads, electronic; Helmets for scooter riders; Computer apparatus for drawing; Drawing apparatus and instruments adapted for use with computers; Photo printers; Colour printers; Inkjet printers; Portable printers; Headphones; Music headphones; In-ear headphones; Stereo headphones; Headphone consoles; Headphone amplifiers; Covers for headphones; Stereophonic headphones; Headphones for microphones; Two-way plugs for headphones; Control boxes for headphones; Plug adaptors for headphones; Adapter cables for headphones; Headphones for audio apparatus; Headphone-microphone combinations; Stereo headphones for personal entertainment use; Personal headphones for sound transmitting apparatuses; Personal headphones for use with sound transmitting systems; Stereophonic apparan1s incorporating headphones for personal use; Wireless speakers; Wireless chargers; Wireless telephones; Wireless computer mice; Wireless audio speakers; GPS navigation device; Global Positioning System (GPS) navigation devices; Digital projectors; Digital televisions; Digital book readers; Digital audio players; Digital colour printers; Digital audio recorders; Digital signage monitors; Personal digital assistants; Digital controls for robots; Electrical digital control apparatus; Self-synchronizing digital encryptors; Software for processing digital images; Set-top boxes (digital signal receivers); Programmable digital television recorders; Projectors; Image projectors; Video projectors; Multimedia projectors; Motion picture projectors; Liquid crystal display panels for use with overhead projectors; Audio books; Audio players; Audio speakers; Audio recorders; Digital audio disc players; Speakers [audio equipment]; Portable radios; Portable copiers; Portable speakers; Portable printers; Portable computers; Portable music players; Portable multimedia players; Portable digital electronic scales; Speakers for portable media players; Portable communications apparatus for terrestrial vehicles; Portable communication terminals for use in connection with satellites; Laptop computers; Laptops [computers]; Laptop carrying cases; Software; Games software; Computer software; Education software; Application software; Virtual reality software; Data compression software; Augmented reality software; Music-composition software; Computer software platfo1ms; Computer telephony software; Process controlling software; Table representation software; Downloadable computer software; Children’s educational software; Graphical user interface software; Computer software development tools; Video games on disc [computer software]; Computer software for processing address files; Computer game software downloadable from a global computer network; Network software applications being downloadable computer programs; Software for GPS navigation systems; Computer games entertainment software; Scales; Baby scales; Pocket scales; Weighing scales; Bathroom scales; Electronic scales; Electronic weighing scales; Electronic weighing scales for personal use; Wireless audio speakers; Wireless weather stations; Earphones; Headphones; Stereo headphones; Computer apparatus for drawing; Digitiser pads; Notebook computer cooling pads; Tablet PCs; Tablet computer; Tablet monitors; Digital tablets; Tablet computers; Graphics tablets; Tablets computers; Electronic tablets; Covers for tablet computers; Stands adapted for tablet computers; Protective covers for tablet computers; Protective films adapted for tablet computer screens; Display screen fillers adapted for use with tablet computers.”

 

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because none of the audio amplifiers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters” appear in any capacity within the foreign registration.  Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)            Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)            Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

If applicant responds to this issue, applicant must also respond to the issue below.

 

 

CONTINUED & MAINTAINED: SPECIMEN REFUSAL – USE & MATCHING CLASSES 009 & 028

 

Applicant did not apply for Class 016 under Section 1(a), only Classes 009 and 028 had dual filing bases of Section 1(a) and 44(d).

 

Applicant was previously refused registration in International Classes 009 and 028 because the specimens failed to show the mark used in commerce with the applied-for goods and also because the mark did not match the mark in the specimen.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.  Thus, the refusal to register the applied-for mark in International Class(es)009 and 028 is now continued and maintained because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).  

 

Indeed, the substitute specimens demonstrate the same issues the original specimens demonstrated, namely, the specimens are of goods that are not consistent with the applied-for goods and because the marks on the specimens do not match the applied-for mark.

 

USE: Specifically, the submitted specimen for Class 009 consists of a smartwatch; however, the applied-for Class 009 goods consist of “Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.” Likewise, the substitute specimen for Class 028 consists of a 3D pen; however, the applied-for goods consist of “electronic learning toys”. Thus, neither substitute specimen shows use of the mark with the applied-for goods.

 

MATCHING: Further, even if the substitute specimens consisted of goods that were consistent with the applied-for goods (which they do not), the marks on the specimens do not match the applied-for mark. Indeed, as previously discussed in the January 03, 2019 Office Action, registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 009 and 028, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimens display the mark as MY FIRST FONE for Class 009 specimen and MY FIRST 3DPEN for Class 028 specimen respectively.  However, the drawing displays the mark as MY FIRST.  The mark on the specimen does not match the mark in the drawing because the additional wording changes the commercial impression of the mark, namely, in each case, the added wording connotes what object is intended to be used as the kid’s “First” product. Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

(2)       Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, and as noted above, the added wording in each of the specimens changes the connotation of the mark to connote what each object is intended to be the child’s first of that object. Thus, applicant’s usage of the marks on the specimens create a different impression in each case and therefore the drawing cannot be amended.

 

Moreover, applicant should note that for Class 028 the application specifies both a use basis under Trademark Act Section 1(a) and a reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.34(a)(1), (a)(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(a) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. Applicant should note that this does not apply to Class 009 because the scope of the foreign registration does not cover the applied-for goods herein, as discussed above.

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

PARTIAL ABANDONMENT ADVISORY AND 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.

 

If applicant does not timely respond to this Office action, the following Classes will be deleted from the application:  Class 009 and Class 028.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following class only:  Class 016.  See TMEP §718.02(a). 

 

Counsel Recommendation: 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.

 

Persons Who May Sign Responses: 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 an 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 an 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 and otherwise 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 U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.  If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

 

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 July 11, 2019 for

U.S. Trademark Application Serial No. 88119128

 

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. 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

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 July 11, 2019, 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.”