To: | JDL Digital Systems, Inc. (dkerr@fifthavenue-law.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88228980 - AIRSHIP - N/A |
Sent: | 3/14/2019 2:46:59 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88228980
MARK: AIRSHIP
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: JDL Digital Systems, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/14/2019
Search & Prior Filed 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.
Notwithstanding reference to the prior-filed application above, 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.
Requirements
Identification of Goods
The identification of goods is indefinite and must be clarified because numerous of applicant’s identifications for software goods fail to state the function or field of use, or both, of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Identifications for software in International Class 9 must clearly 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).
Additionally, the wording “systems” is vague; that is, applicant must indicate the components of the systems or identify them as “computer software and hardware systems sold as a unit” and then specify the function and field of use of the systems. TMEP §1401.05(d) .
Finally, the wording “computer software and systems for video analytics, computer software for facial recognition, computer software for machine learning, computer software for artificial intelligence, computer software for system networking, computer software and systems for integration in the nature of sonar integration, sensor integration, radar integration, infrared sensor integration, GeoSpatial integration” is vague due to applicant’s consistent use of commas as opposed to semicolons to distinguish any discrete goods. Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Int. Class 09:
Computer software and COMPUTER hardware for digital video management FOR USE IN THE FIELD OF ______ {if field specific, indicate field of
use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state “for general use”}; computer software for processing
digital video files FOR USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not
field specific, state “for general use”}; digital video recorders; digital video recording software for IP (Internet protocol) video surveillance FOR USE IN
THE FIELD OF ______ {if field specific, indicate field of use, e.g., security surveillance, etc., or, if not field specific, state “for general use”};
computer software for optical character recognition FOR USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., security surveillance, building
access, etc., or, if not field specific, state “for general use”}; computer software for digital audio and video synchronization FOR USE IN THE FIELD OF
______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state “for general
use”}; [computer software of,] computer software for DISPLAYING video matrices [display] FOR USE IN THE FIELD OF
______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state “for general
use”}; computer software and COMPUTER HARDWARE systems SOLD AS A UNIT for video analytics[,]FOR USE IN THE FIELD OF ______
{if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state “for general use”};
computer software for facial recognition FOR USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., security surveillance, computer system
access, etc., or, if not field specific, state “for general use”}, computer software for ______ {specify function of software, e.g.,
creating} machine learning FOR USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance,
etc., or, if not field specific, state “for general use”}, computer software for ______ {specify function of software, e.g.,
creating} artificial intelligence FOR USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., weather forecasting, security
surveillance, etc., or, if not field specific, state “for general use”}, computer software for COMPUTER system networking FOR USE
IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state
“for general use”}, computer software and COMPUTER HARDWARE systems SOLD AS A UNIT for THE integration
[in the nature] of _____ {indicate what is being integrated, e.g., text, audio, graphics, still images, video images} FROM
sonar [integration] DEVICES, _____ {specify the type of sensors, e.g., motion sensors} SENSORS [sensor integration], radar [integration] DEVICES, infrared _____ {specify the type of sensors, e.g., motion} SENSORS [sensor integration], [GeoSpatial
integration] GEOGRAPHICALLY LOCALIZED _______ {specify what is being integrated, e.g., motion and sound sensors}[;], drone [integration]
______ {specify what is being integrated, e.g., digital video images}, unmanned aerial vehicle [integration] ______ {specify what
is being integrated, e.g., digital video images}, and mobile robot [integration] ______ {specify what is being integrated, e.g., movement
sensors} INTO _______ {indicate what the data/images, etc., are being integrated into, e.g., multimedia computer software applications} FOR
USE IN THE FIELD OF ______ {if field specific, indicate field of use, e.g., weather forecasting, security surveillance, etc., or, if not field specific, state “for general use”}
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.
Color Drawing With No Colors Claimed
To clarify whether color is a feature of the mark, applicant may respond by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a new drawing showing the mark only in black and white. In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
(2) If color is a feature of the mark, applicant must provide a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where all the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors white and orange are claimed as a feature of the mark.”
Description: “The mark consists of the stylized wording “AIRSHIP” superimposed over a stylized design of a dirigible. The color white appears in the word “AIRSHIP” and the color orange appears in the design of the dirigible. The gray rectangular background to the mark represents transparent background areas and is not claimed as a feature of the mark.
See TMEP §807.07(a)(i)-(b).
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.
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. §2.191; 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.
/Paul C. Crowley/
Trademark Examining Attorney
Law Office 119
(571) 272-8846
paul.crowley@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.