Notation to File

Response Requested: Trademark Application Serial No. 88205789—CLIK     RE: Trademark Application Serial No. 88205789—CLIK   Dear Thomas A. Polcyn, Esq.:   I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email.    Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.   Requirement: Identification of Goods THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN   The wording “mobile phone chargers” in the identification of goods is indefinite and needs clarification to specify what the goods charge, i.e. “chargers for batteries.”  TMEP §1402.01.   The wording “charging docks for mobile phones and digital music players” in the identification of goods is indefinite and needs clarification to specify goods by common commercial name, e.g. “chargers for batteries.”  TMEP §1402.01.   The wording “wireless electronic locking systems consisting of […] wireless gateways, wireless plug-in modules and key fobs” in the identification of goods is indefinite and needs clarification to specify the goods by common commercial name, e.g. “plug-in connectors.”  TMEP §1402.01.   The wording “wireless plug-in modules which enable wireless control of locks” in the identification of goods is indefinite and needs clarification to specify the goods common commercial name, e.g. “plug-in connectors.”  TMEP §1402.01.   The wording “wireless gateways for transmitting and receiving signals for electronic locks” in the identification of goods is indefinite and needs clarification to specify the goods in International Class 009 by common commercial name, e.g. “gateway routers in the nature of computer control hardware.”  TMEP §1402.01.   The wording “encoded electronic wireless key fobs for controlling electronic locks” in the identification of goods is indefinite and needs clarification to specify the goods in International Class 009 by common commercial name, e.g. “electronic key fobs being remote control apparatus.”  TMEP §1402.01.   The wording “security equipment, namely, […] computer controlled surveillance systems” in the identification of goods is indefinite and needs clarification to specify the surveillance systems in International Class 009 by common commercial name, e.g. “security surveillance robots,” “security mirrors for surveillance.”  TMEP §1402.01.   The identification for “security equipment, namely, […] computer controlled surveillance systems” in International Class 009 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5; “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7; and “cameras,” “security surveillance robots,” and “security mirrors for surveillance,” are in Class 9.   Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d).    The wording, “headsets,” in the identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes, e.g. “headsets for telephones” are in Class 009; “gaming headsets adapted for use in playing video games” are in Class 028.  See TMEP §§1402.01, 1402.03.    Applicant has classified “watch bands and straps” in International Class 009; however, the proper classification is International Class 014.  Therefore, applicant may respond by (1) adding International Class 014 to the application and reclassifying these goods in the proper international class, (2) deleting “watch bands and straps” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.   Applicant has classified “stickers” in International Class 009; however, the proper classification is International Class 016.  Therefore, applicant may respond by (1) adding International Class 016 to the application and reclassifying these goods in the proper international class, (2) deleting “stickers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.   The wording “portable hands free in-car mount for mobile devices, namely, mobile phones, smart phones, mobile computers, cameras, pagers, personal navigators” in the identification of goods is indefinite and needs clarification to specify the goods in International Class 009 by common commercial name, e.g. “smartphone mounts.”  TMEP §1402.01.   If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.   Class 009:        (Based on Use) bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; silicone and leather cases for mobile phones; protective films adapted for smart phones; display screen protectors for providing protection, shade, and privacy specially adapted to electronic devices, namely, laptops, smart phones, personal digital assistants; protective display screen covers for computers, televisions, PC tablets, tablet computers, smart phones and electronic reading devices; mobile phone battery chargers; USB cables; (Based on Intent-to-Use) protective films adapted for smart watches; charging docks in the nature of battery chargers for mobile phones and digital music players; wireless electronic locking systems consisting of wireless electronic locks, wireless gateway routers in the nature of computer control hardware, wireless plug-in connectors and electronic key fobs being remote control apparatus; wireless plug-in modules in the nature of plug-in connectors which enable wireless control of locks; wireless gateway routers in the nature of computer control hardware for transmitting and receiving signals for electronic locks; electronic locks; encoded electronic wireless key fobs being remote control apparatus for controlling electronic locks; thermostats; climate control system consisting of a digital thermostat that can be controlled wirelessly from a remote location and mounting hardware therefor; security equipment, namely, security cameras, digital video recorders, video tape recorders, streaming video and computer hardware and software for monitoring security camera functions, computer controlled surveillance systems comprised of [specify, e.g. cameras, security mirrors for surveillance]; adapter plugs; headsets for telephones; headsets for mobile telephones; wireless headsets for smartphones; earphones and headphones; portable hands free in-car mounts in the nature of smartphone mounts for mobile devices, namely, mobile phones, smart phones, mobile computers, cameras, pagers, personal navigators   Class 014:       (Intent-to-Use Basis) watch bands and straps   Class 016:       (Intent-to-Use Basis) stickers   Class 028:       (Intent-to-Use Basis) gaming headsets adapted for use in playing video games   TMEP §1402.01.   Advisories   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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.  Please find a sample excerpt from the ID Manual attached to the present Office action.   Multiclass Advisories for Goods Under Section 1(b) Intent-to-Use Basis   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 Section 1(b):