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: 10/17/2018

 

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

 

The trademark examining attorney has also reviewed applicant’s voluntary amendment, proposing the addition of a claim of priority under Trademark Act Section 44(d), without the intention of proceeding to registration under Trademark Act Section 44(e). This amendment has been accepted.

 

SUMMARY OF ISSUES:

 

• Prior-Filed Application
• Partial Section 2(d) Refusal – Likelihood of Confusion
• Description of the Mark
• Identification of Goods and Services
• Multiple-Class Application Requirements

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87909599 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2885673, 4244478, 4724220, 4397687, and 5037298.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.  This refusal applies to International Class 9 and 38 only.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination.  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, not all of the du Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012); see TMEP §1207.01.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016); see TMEP §1207.01.

 

Similarity of the Marks

 

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).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); TMEP §1207.01(b).

 

In this case, the following marks must be compared:

 

Application:        “METRO”, in stylized characters with a design

Reg. 2885673:      “METROCALL”, a typed drawing

Reg. 4244478:      “METRO”, in standard characters

Reg. 4724220:      “METROCONNECT”, featured in a design

Reg. 4397687:      “METROX”, in standard characters

Reg. 5037298:      “METRO”, in standard characters

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §1207.01(b)(viii), (c)(ii).  For example, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).  For marks containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016); TMEP §1207.01(c)(ii).

 

Greater weight is often given to dominant features when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985). This is because the evaluation “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.”  In re U.S. Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017); 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 Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016); TMEP §1207.01(b).  The commercial impression created by the dominant elements of a mark indicates what is likely to be retained in the general impression of the average consumer.

 

Comparing the applied-for mark to Registration Nos. 4244478 and 5037298, the marks contain identical wording and are the same in sound and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Moreover, because the cited marks are registered in standard characters, the marks may be presented in the same manner of display.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Consequently, the marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants respective goods and/or services.  Id. Therefore, the marks are confusingly similar. 

 

As for the marks in Registration Nos. 2885673, 4724220, and 4397687, the wording “METRO” dominates in creating the commercial impression because the wording is dominant over any stylization and/or design and it is the first word in each mark.  See, 119 USPQ2d at 1055; Presto Prods., Inc., 9 USPQ2d at1897.  The marks are confusingly similar because the dominant elements in the registered marks are identical to the only wording in the applied-for mark.

 

Similarity of the Goods Services

 

The goods and/or services must be compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); TMEP §§1207.01, 1207.01(a)(vi).  Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on 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).  The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); TMEP §1207.01(a)(i)

 

In this case, the relatedness of the following relevant goods and services must be considered:

 

Application (METRO): 

 

Class 009:       Wireless telephones; cellular telephones; smartphones; wireless local area networks access points configured as onboard diagnostic system dongles; onboard diagnostic system dongles that provide wireless connectivity to a cellular telecommunications network; internet of things (IoT) devices; SIM cards; memory cards; memory card readers; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telephones and smartphones; removable back covers for wireless phones and smartphones; protective transparent display coverings, namely, plastic transparent films for covering and providing a scratch proof barrier or protection for displays on wireless telephones and smartphones; USB cables; high-definition multimedia interface adapters and cables; wired and wireless hands-free microphone and earphone adapters; stereo headphones; ear buds; ear bud covers; car battery chargers; wall battery chargers; power adaptors; belt clip holsters for carrying wireless phones and smartphones; docking stations for recharging of wireless phones and smartphones; in-vehicle holders for holding and charging wireless phones and smartphones; fitted wireless phone and smartphone pouches; near field communications (NFC) tags; downloadable data files consisting of audio, video and multimedia works containing music and ringtones; software for use in controlling and monitoring prepaid wireless services; software for mobile wallet services and mobile commerce; software for downloading and playing data files consisting of audio recordings of voicemail messages; software for locating, triggering an alarm on, locking access to, erasing data and media on and initiation of backup of data and media on misplaced or stolen wireless telecommunications devices; software for blocking incoming telephonic and data communications from third parties; software for receiving and presenting text, audio, images and video consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts; software for monitoring the location of onboard diagnostic system dongles and providing updates and alerts concerning the location of onboard diagnostic system dongles; software for receiving and viewing updates and alerts concerning performance metrics of motor vehicles; software for receiving and viewing updates and alerts concerning the driving behavior of motor vehicle operators; computer software for establishing geofencing boundaries, establishing rules for the generation of alerts associated with geofenced boundaries, and receiving and viewing alerts associated with geofenced boundaries; computer software for receiving and viewing motor vehicle trip data

 

Class 038:       Cellular telecommunications services; cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks and the Internet; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; text messaging services; multimedia messaging services; providing multiple-user access to a global computer network; providing technical support regarding the usage of cellular telecommunications services and equipment; wireless roaming services; electronic mail services; ringback tone services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; cellular telecommunications services, namely, filtering and blocking of incoming voice telecommunications; cellular telecommunications services, namely, providing transmission of text, audio, images and video content consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts over a cellular telecommunications network; wireless telecommunications services, namely, providing cellular telecommunications network connectivity to a cellular-enabled onboard diagnostic system dongle; wireless telecommunications services, namely, transmitting data consisting of updates and alerts concerning performance metrics of motor vehicles, the driving behavior of motor vehicle operators, motor vehicle location and trip information, and driver performance information

 

Registration No. 2885673 (METROCALL):   

 

Class 038:       telecommunications services, namely providing telephone communication services, cellular telephone services and wireless telephone and personal communication services to the public at large; telecommunication services, namely local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable or satellite transmission

 

Registration No. 4244478 (METRO):  

 

Class 038:       Electronic transmission for others of securities and financial information via computer linking services, namely, communicating and routing trade information involving orders, entry and execution services, to others via a global computer network

 

Registration No. 4724220 (METROCONNECT):

 

Class 038:       Providing wireless data transmission services for small, medium and enterprise fleet companies operating over a private network for the purpose of tracking fleet trucks, telemetry position and truck status; providing machine-to-machine (M2M), telemetry and Supervisory Control and Data Acquisition (SCADA) transmission services for the commercial and industrial sector for monitoring and controlling trucks and cargo operating over a private network; providing private and secure real time electronic communication to track fleet trucks, truck telemetry position and track truck status over a private computer network

 

Registration No. 4397687 (METROX):           

 

Class 009:       Computer peripherals; computer hardware, namely, embedded processors, semiconductors, software drivers, host channel adapters, target channel adapters, switches, routers, backplanes, computer disc drives, host bus adapters; computer software for server to server communications used to transmit data across a connection between computers or computer to storage unit, and used to enable computers to access data from a storage device, all for the server, communication and data storage markets

 

Registration No. 5037298 (METRO):  

 

Class 009:       Microcontrollers for use by hobbyists in putting together do it yourself electronic projects

 

Identifications are interpreted according to the ordinary meaning of the terms used to describe the goods and services and are presumed to encompass all goods and services of the type described.  See Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re Thor Tech, Inc., 85 USPQ2d 1474, 1477 (TTAB 2007); TMEP §1402.07(a).

 

In this case, applicant’s Class 38 services are related to the services in Registration No. 2885673 because the parties have identified equivalent or overlapping services.  For example, applicant’s identification for “Cellular telecommunications services” is broad enough to encompass registrant’s identification for “cellular telephone services and wireless telephone and personal communication services to the public at large”.  Similarly, applicant’s identification for “transmission of … data, information, …” is broad enough to encompass the “transmission for others of securities and financial information” identified in Registration No. 4244478 and the provision of wireless data transmission for a specific purpose to specific consumers identified in Registration No.  4724220.

 

With respect to Registration No. 4397687, applicant’s “memory card readers” are encompassed by registrant’s “computer peripherals.”  This is supported by evidence from TechTerms, which states that “[a] computer peripheral is any external device that provides input and output for the computer.”  Additionally, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  See U.S. Trademark Registration Nos. 5569564, 5564621, 5518438, 5555224, 5554459, 5545546, 5540820, 5508033, 5484173, and 5443171.  This evidence shows that goods like registrant’s computer peripherals and applicant’s smartphones, headphones, USGB cables, and protective films/cases are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

As for Registration No. 5037298, applicant’s identification for “internet of things (IoT) devices” is broad enough to encompass the “Microcontrollers for use by hobbyists in putting together do it yourself electronic projects” identified in the registration.  This conclusion is supported by evidence from Postscapes, which describes a variety of “IoT Hardware,” including microcontrollers.  Although registrant has limited the channels of trade to goods for “hobbyists in putting together do it yourself electronic projects,” the identification in the application contains no restrictions and could be offered to the same consumers for the same purposes.

 

Conclusion

 

Considering the similarity of the applied-for mark and the registered marks together with the relatedness of the parties’ goods and/or services, registration of the applied-for mark is refused under Trademark Act Section 2(d) due to a likelihood of confusion with the marks in U.S. Trademark Registration Nos. 2885673, 4244478, 4724220, 4397687, and 5037298.  This refusal applies to International Class 9 and 38 only.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

DESCRIPTION OF THE MARK

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the wording “METRO” in bold, purple lower-cased letters with a curved purple line at the lower left.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification must be clarified because it contains wording that is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “prepaid cellular telecommunications calling card services” may refer to issuing prepaid calling cards in Class 36 or to telephone telecommunications services provided via prepaid telephone calling cards in Class 38.  The wording “electronic email services” could refer to the transmission of electronic mail or to services such as electronic mail system design and implementation for others, in Class 42.  The wording “providing technical support regarding the usage of cellular telecommunications services and equipment” is misclassified in International Class 38, as it appears it could refer either to services in the nature of repair of consumer electronics in Class 37 or to services in the nature of troubleshooting software problems in Class 42. See U.S. Acceptable Identification of Goods and Services Manual (IDM) Entry 038-438 and notes.

 

The identification must also be amended because it contains wording that does not make clear what the goods and/or are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must identify the goods and/or services specifically to provide public notice and to enable the USPTO to classify the goods and/or services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).  TMEP §1402.01.  The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark.   Id.; In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007). 

 

In particular, in Class 9, applicant must specify the particular “internet of things (IoT) devices” claimed.  Applicant must specify the function of its “near-field communications (NFC) tags” or specify that they are blank.  In Class 36, applicant must clarify its “Cellular telecommunications rate plans.”  In Class 38, the wording “wireless roaming services” and “ringback tone services” require further specification to make the nature of the services clear.

 

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

 

Class 009:       Wireless telephones; cellular telephones; smartphones; wireless local area networks access points configured as onboard diagnostic system dongles; onboard diagnostic system dongles that provide wireless connectivity to a cellular telecommunications network; internet of things (IoT) devices, namely, cellular enabled GPS tracking devices; SIM cards; memory cards; memory card readers; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telephones and smartphones; removable back covers for wireless phones and smartphones; protective transparent display coverings, namely, plastic transparent films for covering and providing a scratch proof barrier or protection for displays on wireless telephones and smartphones; USB cables; high-definition multimedia interface adapters and cables; wired and wireless hands-free microphone and earphone adapters; stereo headphones; ear buds; ear bud covers; car battery chargers; wall battery chargers; power adaptors; belt clip holsters for carrying wireless phones and smartphones; docking stations for recharging of wireless phones and smartphones; in-vehicle holders for holding and charging wireless phones and smartphones; fitted wireless phone and smartphone pouches; blank near field communications (NFC) tags; downloadable data files consisting of audio, video and multimedia works containing music and ringtones; software for use in controlling and monitoring prepaid wireless services; software for mobile wallet services and mobile commerce; software for downloading and playing data files consisting of audio recordings of voicemail messages; software for locating, triggering an alarm on, locking access to, erasing data and media on and initiation of backup of data and media on misplaced or stolen wireless telecommunications devices; software for blocking incoming telephonic and data communications from third parties; software for receiving and presenting text, audio, images and video consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts; software for monitoring the location of onboard diagnostic system dongles and providing updates and alerts concerning the location of onboard diagnostic system dongles; software for receiving and viewing updates and alerts concerning performance metrics of motor vehicles; software for receiving and viewing updates and alerts concerning the driving behavior of motor vehicle operators; computer software for establishing geofencing boundaries, establishing rules for the generation of alerts associated with geofenced boundaries, and receiving and viewing alerts associated with geofenced boundaries; computer software for receiving and viewing motor vehicle trip data

 

Class 035:       Retail store services and online retail store services in the field of wireless telecommunications devices, accessories and services; online retail store services featuring downloadable data files consisting of audio, video and multimedia works

 

Class 037:      Providing technical support regarding the usage of cellular telecommunications equipment, namely, repair of telecommunications equipment

 

Class 036:       Wireless telephone payment services, namely, cellular telecommunications rate plans; issuing prepaid cellular telecommunications calling cards; cellular telecommunications payment services, namely, prepaid card services in the nature of making payment for adding airtime to prepaid or pay-as-you-go wireless services; insurance administration services for mobile telecommunications devices; providing extended warranties for mobile telecommunications devices; financing of purchases; equipment financing services; bill payment services; cellular telecommunications payment services, namely, cellular rate plans that exempt music streaming data from cellular rate plan data limits; cellular telecommunications payment services, namely, an adjustable cellular rate plan payment feature that permits a cellular subscriber to exempt data consisting of streamed video content from cellular rate plan data limitations via an opt-in/opt-out interface that activates or deactivates a video resolution limitation     

 

Class 038:       Cellular telecommunications services; Cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks and the Internet; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; text messaging services; multimedia messaging services; providing multiple-user access to a global computer network; wireless roaming services, namely, providing access to a cellular telecommunications network; electronic transmission of e-mail; telephone communication services in the nature of providing telephone features, namely, ringback tone services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; cellular telecommunications services, namely, filtering and blocking of incoming voice telecommunications; cellular telecommunications services, namely, providing transmission of text, audio, images and video content consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts over a cellular telecommunications network; wireless telecommunications services, namely, providing cellular telecommunications network connectivity to a cellular-enabled onboard diagnostic system dongle; wireless telecommunications services, namely, transmitting data consisting of updates and alerts concerning performance metrics of motor vehicles, the driving behavior of motor vehicle operators, motor vehicle location and trip information, and driver performance information; telephone telecommunications services provided via prepaid telephone calling cards

 

Class 042:      Providing technical support regarding the usage of cellular telecommunications services and software, namely, troubleshooting of telecommunications software; E-mail system design and implementation for others

 

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).  If applicant adds one or more international classes, applicant must comply with the multiple-class application requirements set forth below

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least six classes; however, applicant submitted a fee(s) sufficient for only four class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

QUESTIONS:

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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.  

 

 

 

/John LaMont/

Examining Attorney

Law Office 123

(571) 270-0404

john.lamont@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 10/17/2018 FOR U.S. APPLICATION SERIAL NO. 88129830

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/17/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.