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: 3/26/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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).

 

SUMMARY OF ISSUES:

• IDENTIFICATION OF GOODS

 

IDENTIFICATION OF GOODS

 

Applicant has applied for WD_BLACK for “apparatus for recording, transmission or reproduction of sound or images; backup drives for computers; cloud servers; communication servers; computer peripherals; computer database servers; computer disk drives and computer memories for network attached storage devices for file sharing and cloud backup; computer hardware; computer hardware and software for data storage; computer hardware for games and gaming; computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content; computer hardware for upload, storage, retrieval, download, transmission and delivery of network content; computer hardware storage devices for data storage and retrieval; computer memories; computer network hardware; computer network servers; computer network storage devices, namely, storage and backup of electronic data either locally or via a telecommunications network; computer servers; computer software to enable retrieval of data; data processing equipment; data storage devices, namely, hard disk drives, digital disk drives, solid state drives, blank digital storage media, hybrid drives and computer peripherals; electronic components for computers; electronic memories; flash memory cards; hard disk drives; hard disk drive enclosures; hard disk drives featuring multi-core processors; hard disk drives for storage of gaming downloadable content; high-performance hard disk drives; integrated circuits; solid-state drive enclosures; semiconductor memory devices; software for accessing video and data stored on distributed computer storage devices; software for compressing data; software for computer system analysis and optimization; software for encrypting data; software for maximizing data storage; software for operating and administering data storage devices; solid-state drives; solid-state drive enclosures” in International Class 9.

 

The wording “software” in the identification of goods is indefinite and must be clarified because, pursuant to Nice 11-2019, software in Class 9 requires clarification as to whether the software is recorded or downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “flash memory cards” in the identification of goods is indefinite and must be clarified because this wording does not state whether the cards are sold blank.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “solid-state drive enclosures”. See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods.  The curly brackets, e.g. {  }, contain instructions to be followed and/or suggested wording.  Brackets (or instructions) should not be a part of the amended, final ID.  If there is wording in applicant’s version of the identification of goods that should be removed, it will be shown with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9:    “Apparatus for recording, transmission or reproduction of sound or images; backup drives for computers; cloud servers; communication servers; computer peripherals; computer database servers; computer disk drives and computer memories for network attached storage devices for file sharing and cloud backup; computer hardware; computer hardware and recorded software for data storage; computer hardware for games and gaming; computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content; computer hardware for upload, storage, retrieval, download, transmission and delivery of network content; computer hardware storage devices for data storage and retrieval; computer memories; computer network hardware; computer network servers; computer network storage devices, namely, storage and backup of electronic data either locally or via a telecommunications network; computer servers; recorded computer software to enable retrieval of data; data processing equipment; data storage devices, namely, hard disk drives, digital disk drives, solid state drives, blank digital storage media, hybrid drives and computer peripherals; electronic components for computers; electronic memories; blank flash memory cards; hard disk drives; hard disk drive enclosures; hard disk drives featuring multi-core processors; hard disk drives for storage of gaming downloadable content; high-performance hard disk drives; integrated circuits; solid-state drive enclosures; semiconductor memory devices; recorded software for accessing video and data stored on distributed computer storage devices; recorded software for compressing data; recorded software for computer system analysis and optimization; recorded software for encrypting data; recorded software for maximizing data storage; recorded software for operating and administering data storage devices; solid-state drives; solid-state drive enclosures”

 

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).

 

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.

 

RESPONSE GUIDELINES

 

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.

 

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.  

 

 

 

/Katie Foss/

Trademark Examining Attorney

Law Office 125

571-272-4067

katherine.foss@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 3/26/2019 FOR U.S. APPLICATION SERIAL NO. 88261995

 

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 3/26/2019 (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.