Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

Issue date:  September 16, 2019

 

Applicant submitted a Response on September 9, 2019.  The application is suspended for the reasons specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Refusals, advisories and requirements resolved and maintained and continued.  The following requirements are satisfied:  Amendments to the Identifications of Services in International Class 38.  See TMEP §713.02.  The multi-class application requirements were not opted to be completed. 

 

Applicant’s arguments in the Response are not persuasive based solely on the amendment to the identification of goods.  In addition, as stated in the Response, applicant’s foreign application remains pending.  Lastly, the prior-filed applications also remain pending.  Accordingly, the following refusals, advisories and requirements are maintained and continued: 

• Prior-Filed Applications;
• Section 2(d) Refusal – Likelihood of Confusion;
• Amendments to the Identification of Goods in International Class 9;
• Foreign Registration Certificate Required.

 

See TMEP §713.02.  These refusals, advisories and requirements will be addressed once this application is removed from suspension.  See TMEP §716.01.

 

 

PRIOR-FILED APPLICATIONS

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 79239685; 87827165

 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

Application suspended until submission of foreign registration.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

 

Amendments to the Identification of Goods in International Class 9

 

In the Response dated September 9, 2019, applicant provided amendments to the identification of goods in International Class 9.  The amendments are not acceptable for the reasons set forth below. 

 

The original identification in the application was: 

 

Telecommunication machines and apparatus; parts and accessories of telecommunication machines and apparatus; remote control telemetering machines and apparatus; parts and accessories of remote control telemetering machines and apparatus; electronic machines, apparatus and their parts; computers and their peripheries; computer programs.

 

The amendment in the Response is:

 

Telecommunication machines and apparatus, namely, network routers; Electrical relays; Digital electronic devices to control hardware of a ground station; Digital electronic devices to synchronize communication time between a satellite and a ground station between the ground station and a server; remote control telemetering machines and apparatus; computers and their peripheries.

 

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).

 

The wording in the amendment removes the limiting and qualifying language in the original application, broadening the goods from “telecommunication machines and apparatus” to all and all types of “Electrical relays; Digital electronic devices to control hardware of a ground station; Digital electronic devices to synchronize communication time between a satellite and a ground station between the ground station and a server”.  Thus, parts of the amendment broadens the scope of the original identification and is not acceptable.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.

 

Applicant may amend the identification to specify that each of the amended goods are types of “Telecommunication machines and apparatus”, as stated in the original identification in the application.  See the bold text below. 

 

Applicant may substitute the following wording, if accurate:

 

International Class 9:              Telecommunication machines and apparatus, namely, network routers, electrical relays, digital electronic devices to control hardware of a ground station, digital electronic devices to synchronize communication time between a satellite and a ground station between the ground station and a server; remote control telemetering machines and apparatus; computers and their peripheries

 

 

Suspension process

 

The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 16, 2019 for

U.S. Trademark Application Serial No. 88228692

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

Caysido, Rebecca

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@uspto.gov  

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”