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: 2/7/2019

 

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

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Prior-Filed Applications
• Identification of Goods
• Multiple-Class Application
• Unsigned Application
• Foreign Registration Certificate Required – Dual Bases 44(d) & 1(b)

 

PRIOR-FILED APPLICATIONS

 

The filing date of pending U.S. Application Serial No. 87863845 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.

 

IDENTIFICATION OF GOODS

Certain wording in the identification of goods must be clarified because it is indefinite and too broad. The wording could identify a wide variety of goods in multiple classes. Applicant must clarify the nature and type of the identified goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(c).

 

In Class 9 wording “radar systems”, “radar and engagement weapon control systems”, “missile guidance and control systems”, “apparatus for use in aiming weapons, guiding missiles or projectiles, or for use in training operators of weapons systems”, “apparatus for the guidance, homing and aiming of weapons”, “electronic counter measures apparatus”, “weapon warning apparatus” “electromagnetic warning apparatus”, infra-red, heat, homing and target detection devices”, “apparatus and equipment for weapons”, “weapon targeting systems” “weapon guidance systems”, and “weapon engagement control systems” is indefinite and must be clarified to identify goods in Class 9. For example, “radar systems”, “missile guidance and control systems”,  and “ranging systems” may include computer hardware and software systems for a particular purpose such as detecting radar, missile guidance, finding range etc., or computer hardware and software for operating these systems. Further, “radar control systems” may include radar receivers with amplifiers, radar jamming apparatus, etc.

 

Additionally, the wording “range finders” in Class 9 is indefinite and must clarify the nature of the goods. For example, range finders may be used for cameras, golf, rifle scopes, spotting scopes, etc.

 

The wording “apparatus for use in aiming weapons, guiding missiles or projectiles, or for use in training operators of weapons systems”, “apparatus for the guidance, homing and aiming of weapons”, “electronic counter measures apparatus”, “weapon warning apparatus” “electromagnetic warning apparatus”, “apparatus and equipment for weapons” is indefinite and must be clarified to indicate the nature of the apparatus. For example, “apparatus” in Class 9 can include computer hardware and software systems for the specific purpose for the goods, e.g., electronic countermeasures apparatus, namely, lasers for projecting signals to counteract guided missiles and weapons systems,  Stand-off explosives and chemical detection system comprising strobe and probe lasers, optical detectors and digital signal process units, etc., or may include Class 9 goods that are part of the apparatus, e.g., electromagnetic warning apparatus in the nature of electric warning lights, electronic warning bells, etc.

 

Further, the identification for software in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

The wording “military vehicles for land, sea, and air” in Class 12 is indefinite and must be clarified as to the nature of the vehicles because it may identify, for example, military transport vehicles in Class 12 or tanks in Class 13.

 

Further, the wording “radar vehicles for land, sea and air; weapon engagement control vehicles for land, sea and air;” in Class 12 must be clarified because it could identify radar vehicles and weapon engagement control vehicles in Class 9, if the radar and weapon engagement control vehicles are separate from the military transport vehicles or Class 12, if the radar and weapon engagement control vehicles are specifically adapted for use in Class 12 military transport vehicles. Further, “weapon engagement control vehicles” may identify goods in Class 13, e.g. tanks.

 

The wording “Missiles, guns and weapons; projectiles; flying weapons; cannons; ammunition; explosive firing cartridges; fuses for explosives; detonators; bombs; explosive substances; weapons for launching projectiles and for launching missiles; protective shields, protective cases and carrying cases adapted for use with any of the aforesaid goods; parts and fittings for the aforesaid goods” in Class 12 is misclassified. The proper classification is International Class 13, or potentially international Class 9 with respect to the identified “protective shields” insofar as they identify protective shields in the nature of body armor which may be used with the identified explosive goods.

 

Further, the wording “missiles”, “guns and weapons”, “flying weapons”, “explosive substances” in Class 13 must be clarified to identify the nature of the type of missiles, weapons, and explosive substances. For example, missiles may include guided missiles, ballistic missiles, etc. Additionally weapons can include ballistic weapons, tanks, etc. Flying weapons can include projectiles, ballistic missiles, etc. in Class 13. Finally, explosive substances can include goods in Class 1, e.g. ammonium nitrate, and goods in Class 13, e.g. liquid explosives, organic-nitrate explosives, etc.

 

The word “parts” in the identification of goods in International Classes 9 and 12 must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class. 

 

However, while the word “parts” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods.  See TMEP §1402.03

 

For examples of acceptable identifications for parts, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

Applicant may adopt the following wording, if accurate: 

 

Class 9: Radars; Radar systems in the nature of radar apparatus; radar computer hardware and software systems for detecting radar; radar control systems, namely, {indicate type of radar control system, e.g, radar receivers with amplifiers, radar jamming apparatus, etc.}; radar and engagement weapon control systems in the nature of computer hardware and software systems for operating radar and engagement weapon control systems; computer hardware and software systems for missile guidance and control; computer hardware and software systems for ranging, namely finding range; range finders in the nature of {indicate type of range finder, e.g., distance measuring apparatus, rifle scopes, spotting scopes, etc.}; computer hardware and software for use in aiming weapons, guiding missiles or projectiles, or for use in training operators of weapons systems; computer hardware and software for the guidance, homing and aiming of weapons; electronic countermeasures apparatus, namely, {indicate Class 9 goods, e.g., lasers for projecting signals to counteract guided missiles and weapons systems,  Stand-off explosives and chemical detection system comprising strobe and probe lasers, optical detectors and digital signal process units, etc.}; weapon warning apparatus in the nature of {indicate warning apparatus, e.g., electric warning lights, electronic warning bells, etc.};electromagnetic warning apparatus in the nature of {indicate warning apparatus, e.g., electric warning lights, electronic warning bells, etc.}; infra-red, heat, homing and target detecting devices, namely, {specify Class 9 good, e.g. heat detectors, infrared cameras, etc.} apparatus and equipment for weapons, namely, {specify Class 9 goods, e.g., computer hardware and software systems for the guidance, homing and aiming of weapons}; weapon targeting systems in the nature of computer hardware and software systems for operating weapon targeting systems; weapon guidance systems in the nature of computer hardware and software systems for operating weapon guidance systems; weapon engagement control systems in the nature of computer hardware and software systems for operating weapon engagement control systems; computer {specify type of software, e.g., operating, graphics, etc.} software; computer software for use in aiming weapons, guiding missiles or projectiles, or for use in training operators of weapons systems; computer software for weapon control, weapon guidance, weapon management and weapon warning; computer software for radar control and management;} computer software for missile threat detection and warning; computer software and systems for training weapon operators; parts and fittings for the aforesaid goods; protective shields, namely, {indicate Class 9 protective shields, e.g., face-protection shields, hard plate personal body armor, etc.}; radar vehicles for land, sea, and air, in the nature of {Specify Class 9 goods, e.g., radar antennas, radar detectors, etc.};  weapon engagement control vehicles for land, sea, and air, in the nature of {specify Class 9 goods, e.g., computer hardware and software systems for the guidance, homing and aiming of weapons}

 

Class 12: Military vehicles for land, sea and air for transport; vehicles for land, sea and air, in the nature of military vehicles for transport, namely, carrying radar and engagement weapon control systems; radar vehicles for use with military land, sea and air vehicles for transport; weapon engagement control vehicles for use with military land, sea and air vehicles for transport; military command vehicles for land, sea and air; protective shields; parts and fittings thereof, namely, {specify parts and fittings for the identified Class 12 goods, tires, steering wheels for vehicles, etc.}

 

Class 13: Missiles in the nature of {indicate type, e.g., guided missiles, pyrotechnic missiles, ballistic missiles, etc.}, guns and weapons in the nature of {indicate type, e.g., ballistic weapons, tanks, tear-gas weapons, etc.}; projectiles; flying weapons in the nature of {projectiles, ballistic missiles, ship-to-air missiles, etc.}; cannons; ammunition; explosive firing cartridges; fuses for explosives; detonators; bombs; explosive substances, namely, {indicate type, e.g., liquid explosives, organic-nitrate explosives, explosive primers, explosive powders, etc.}; weapons for launching projectiles and for launching missiles; protective shields, protective cases and carrying cases adapted for use with any of the aforesaid goods; parts and fittings for the aforesaid goods; tanks

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

CLASSIFICATION OF GOODS

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 9, 12, and 13.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes.  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.

 

UNSIGNED APPLICATION

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED – DUAL BASES 44(d) & 1(b)

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

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.  

 

 

 

Toplak, Rio

/Rio Toplak/

Trademark Examing Attorney

Law Office 127

(571) 272-6572

 

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 2/7/2019 FOR U.S. APPLICATION SERIAL NO. 88195172

 

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 2/7/2019 (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.