To: | CHINA MOBILE INTERNATIONAL LIMITED (ben.kwong@conpak.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88254607 - ICO - N/A |
Sent: | 3/21/2019 1:41:57 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88254607
MARK: ICO
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CORRESPONDENT ADDRESS: KWONG, BEN; CONPAK INTELLECTUAL PROPERTY WORLD FINANCE CENTRE, 17 CANTON ROAD |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: CHINA MOBILE INTERNATIONAL LIMITED
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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: 3/21/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
PRIOR-FILED APPLICATION(S)
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.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
The applicant’s identification of services are as follows:
· Class 38: Rental of access time to global computer networks; providing access to databases; communications by telegrams; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fiber optic networks; electronic bulletin board services; information about telecommunication; providing internet chatrooms; message sending; news agency services; providing online forums; satellite transmission; streaming of data; rental of telecommunication equipment; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; telephone services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting; facsimile transmission; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; paging services; rental of telephones; television broadcasting
The highlighted portions of the applicant’s identification of services must be clarified because it fails to describe the underlying nature of the services with sufficient particularity and/or includes services classified in other classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Note that the rest of the identification of services is acceptable in Class 38.
Specifically, “message sending; providing online forums; telephone services; rental of message sending apparatus” are indefinite and requires further clarification for proper classification.
“News agency services” is indefinite and broad and requires further clarification for proper classification. If the service is for gathering and disseminating news, then it is classified in Class 41, e.g., “News agencies, namely, gathering and dissemination of news”. If, however, the service is to transmit news to reporting organizations, then it is classified in Class 38.
Accordingly, applicant may adopt any or all of the following identification(s), if accurate:
· CLASS 38: Rental of access time to global computer networks; providing access to databases; communications by telegrams; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fiber optic networks; electronic bulletin board services; information about telecommunication; providing internet chatrooms; online services, namely, message sending; news agency services for electronic transmission; providing online forums for {indicate field or subject matter of forum, e.g., mobile telecommunications}; satellite transmission; streaming of data; rental of telecommunication equipment; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; {specify type in this class, e.g., mobile, international, etc.} telephone services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting; facsimile transmission; rental of facsimile apparatus; rental of message sending telecommunications apparatus; rental of modems; paging services; rental of telephones; television broadcasting
· CLASS 41: News agencies, namely, gathering and dissemination of news
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must explain whether the wording in the mark “ICO” has any significance in the trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.
In addition, applicant must respond to the following:
· Whether ICO is used to describe a characteristic, feature, or purpose of applicant’s services
· Whether ICO is an acronym or abbreviation of another term
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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. §§2.62(c), 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.
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.
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@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.