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: 3/6/2019

 

Advisory: Examiner’s Amendment Available

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

If sending an informal e-mail, please include the serial number and wording “EXAMINER’S AMENDMENT” in the subject field.  Upon emailing the examining attorney and authorizing the entry, no further response is necessary and an examiner’s amendment will issue promptly.  An examiner’s amendment will expedite processing of the application.

 

Introduction

 

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 Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Advisory: Summary of Issues

 

1.      Requirement: Identification of Goods

2.      Advisory: No Partial Abandonment

3.      Advisory: Response Guidelines

 

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):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only one (1) class.  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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Advisory: No Partial Abandonment

 

If the fees paid in a multiple-class application are sufficient to cover one class but insufficient to cover all the classes, the examining attorney will require that the applicant submit the additional fees or specify the classes to which the original fee should be applied. If the applicant does not respond to the Office action, the entire application will be abandoned.  TMEP §718.02(a). 

 

Advisory: Response Guidelines

 

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.  

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 3/6/2019 FOR U.S. APPLICATION SERIAL NO. 88205789

 

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 3/6/2019 (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.