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: 3/18/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

ISSUE SUMMARY

 

Before the application can proceed further, the applicant must address the following issues in a timely manner:

 

1. Requirement to amend the identification of goods
2. Requirement to amend the identification of services
3. Requirement to amend the classification of the goods
4. Requirement to provide information concerning the mark

 

 

1. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS

 

The applicant is required to amend the identification of goods as indicated below.  Where possible, the examining attorney has offered suggestions.  Such suggestions are in UPPLER CASE WITH BOLD FONT.  Where it is suggested that any of the applicant’s wording should be deleted, that is indicated with a line through such wording.  As needed, improper classification is also indicated.

 

Applicant’s Class 1 List

 

The wording “polyimide resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “SEMI-PROCESSED polyimide resins.”  Please note, below, that these goods are misclassified and must be in Class 17.

 

The wording “polyamide resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “SEMI-PROCESSED polyamide resins.”  Please note, below, that these goods are misclassified and must be in Class 17.

 

The wording “polyester resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “UNPROCESSED polyester resins.”

 

The wording “polyethylene resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “UNPROCESSED polyethylene resins.”

 

The wording “liquid crystal polymer resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “UNPROCESSED liquid crystal polymer resins.”

 

The wording “epoxy resins” in the identification of goods is indefinite and must be clarified because the nature of the resins are not set forth.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “UNPROCESSED epoxy resins.”  The wording “unprocessed epoxy resins” is redundant if the applicant adopts the suggestion above.  Such redundant wording should be deleted.

 

 

Applicant’s Class 9 List

 

The wording “reinforced films for use as display panel covers” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Reinforced FITTED PLASTIC films for use as display panel covers PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “optical films for displays” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC optical films for USE AS displays COVERS PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “liquid crystal protective films” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC liquid crystal protective films COVERS PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “reinforced films for use as LCD display panel covers” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC reinforced films for use as LCD display panel covers PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “reinforced films for use as LED display panel covers” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC reinforced films for use as LED display panel covers PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “conductive reinforced films for OLED displays” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC conductive reinforced films for OLED displays COVERS PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “conductive films for flexible displays” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED PLASTIC conductive films for flexible displays COVERS PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”

 

The wording “cover glass for solar cells” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “cover FITTED glass COVERS for solar cells SOLD AS A COMPONENT OF SOLAR CELLS.”

 

The wording “optical films for LED” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent though it may be redundant of one of the suggested identifications set forth above.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “optical films for LCD” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent though it may be redundant of one of the suggested identifications set forth above.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “films for LCD panels” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent though it may be redundant of one of the suggested identifications set forth above.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “liquid crystal protective film for LCD monitor” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent though it may be redundant of one of the suggested identifications set forth above.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “conductive films for OLED displays” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent though it may be redundant of one of the suggested identifications set forth above.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “glass plates for solar cells” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FITTED glass COVERS for solar cells SOLD AS A COMPONENT OF SOLAR CELLS.”

 

Applicant’s Class 17 List

 

The wording “scratch protection films” in the identification of goods is indefinite and must be clarified because the nature and purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “scratch protection FITTED PLASTIC films PROVDING PROTECTION FOR ELECTRONIC DEVICES, NAMELY, SMART PHONES, DIGITAL CAMERAS AND MP3 PLAYERS.”  Please note, below, that these goods are misclassified and must be in Class 9.

 

The wording “transparent films” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “coated plastic sheets” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “semi-processed reinforced plastics” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “scratch protection plastic films other than for wrapping” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “plastic reinforced films other than for wrapping” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “semi-processed plastics” in the identification of goods is indefinite and must be clarified because it is generally unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “semi-processed plastic substances.”

 

The wording “plastic films other than for wrapping” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “plastic films other than for wrapping FOR PACKAGING, CUSHIONING OR STUFFING PURPOSES.”

 

The wording “polyethylene films other than for wrapping” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “polyethylene films other than for wrapping FOR PACKAGING, CUSHIONING OR STUFFING PURPOSES.”

 

The wording “rigid polyester films” in the identification of goods is indefinite and must be clarified because the nature of the goods is not at all apparent.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “plastics in the form of sheets/films/blocks/rods/tubes” in the identification of goods is indefinite and must be clarified because the slash marks render the identification unclear and their nature and purpose is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “plastics in the form of sheets, films, blocks, rods, tubes, plastics for USE IN FURTHER manufacturing.”

 

The wording “plastics for manufacturing” in the identification of goods is indefinite and must be clarified because the slash marks render the identification unclear and their nature and purpose is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “plastics SHEETS FOR USE IN manufacturing.”

 

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).

 

 

2. REQUIREMENT TO AMEND THE IDENTIFICATION OF SERVICES

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of services.  In this case, however, because the nature of the services set forth as “wholesale store service, retail store services, sales agency services, sales arrangement services featuring the aforesaid goods in classes” is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

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

 

 

3. REQUIREMENT TO AMEND THE CLASSIFICATION OF GOODS

 

Several of the items of goods, as amended per the suggestions above, are classified incorrectly.  Applicant must amend the application to classify the goods as follows:

 

• Applicant’s Class 1 List

 

 

• Applicant’s Class 17 List

 

 

 See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

4. REQUIREMENT FOR INFORMATION CONCERNING THE GOODS AND SERVICES

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Specifically, applicant must submit the following:  photographs and use/instruction manuals concerning all goods for which the identification has been rejected.  Such information must be labelled so that it is apparent to which goods it applies.  Additionally, the applicant must indicate whether or not “FCW” (in any format, such as “F C W”, “FC W” or “F CW”) has any meaning with respect to the goods or services.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

 

 

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.  

 

 

 

/Andrew D. Lawrence/

Trademark Managing Attorney

Law Office 126

571.272.9342  voice

571.273.9342  fax

andrew.lawrence@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 3/18/2019 FOR U.S. APPLICATION SERIAL NO. 88237312

 

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 3/18/2019 (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.