| To: | Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88281362 - X - 1P3518.tba |
| Sent: | 4/9/2019 4:14:30 PM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88281362
MARK: X
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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: Panasonic Corporation
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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: 4/9/2019
The referenced application and the preliminary amendment dated February 7, 2019 have been reviewed by the assigned trademark examining attorney. The signed declaration and the amendment to the identification of goods and services set forth in the preliminary amendment are accepted. 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION AS TO THE SPECIFIED
SERVICES ONLY
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4427319. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is X in design form for, in relevant part, “Advertising and publicity services; online advertising on a computer network; rental of advertising space; marketing research or analysis” in International Class 35.
Registrant’s mark is X in design form for “Advertising services; Designing marketing campaigns for others; Business consultation services and business marketing services related to deliverability, workflow, marketing strategies, analytics and test strategies, and message design; promoting the goods and services of others by distributing advertising materials through a variety of methods” in International Class 35.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: Similarity of the marks, relatedness of the services, and similarity of the trade channels of the services.
SIMILARITY OF THE MARKS
The applied-for mark and the registered mark are sufficiently similar to create a likelihood of confusion.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When the marks at issue are both design marks, similarity of the marks is determined primarily on the basis of visual similarity. See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c). However, a side-by-side comparison is not the test. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973). When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).
In the present case, both marks consist of a stylized letter “X” with shadowing details. Further, the marks identify legally identical services. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). Thus, consumers will likely assume a connection between the parties because applicant’s and registrant’s design marks are visually similar and identify legally identical services.
RELATEDNESS OF THE SERVICES
Applicant has identified its services, in relevant part, as “Advertising and publicity services; online advertising on a computer network; rental of advertising space; marketing research or analysis” in International Class 35.
Registrant has identified its services as “Advertising services; Designing marketing campaigns for others; Business consultation services and business marketing services related to deliverability, workflow, marketing strategies, analytics and test strategies, and message design; promoting the goods and services of others by distributing advertising materials through a variety of methods” in International Class 35.
In this case, the registration uses broad wording to describe “Advertising services”, which presumably encompasses all services of the type described, including applicant’s more narrow “online advertising on a computer network; rental of advertising space; marketing research or analysis”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Similarly, applicant’s broadly worded “Advertising and publicity services” encompasses registrant’s more narrow “Advertising services”. Id. Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Based on the foregoing, consumers encountering X & Design used for “Advertising and publicity services; online advertising on a computer network; rental of advertising space; marketing research or analysis” and X & Design for “Advertising services; Designing marketing campaigns for others; Business consultation services and business marketing services related to deliverability, workflow, marketing strategies, analytics and test strategies, and message design; promoting the goods and services of others by distributing advertising materials through a variety of methods” are likely to be confused and mistakenly believe that the respective services emanate from a common source.
(1) Deleting the services to which the refusal pertains; or
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
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 OF GOODS AND SERVICES
The identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Further, the wording “electric therm pots” in the identification of goods and/or services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Suggestions documented below.
Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 42 for “testing or research on machines, apparatus and instruments.” 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 and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted. TMEP §1402.07(e).
In addition, particular wording in the identification of goods is indefinite and must be clarified because it does not clearly specify the nature of the goods. 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. Suggestions and further explanation detailed below.
Further, applicant has included the term “and/or” or “or” in the identification of goods and/or services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, the wording “power distribution or control machines and apparatus” and “measuring or testing machines and instruments” in International Class 9 does not make clear what the goods are.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant must also clarify the wording “phase modifiers” in the identification of goods in International Class 9 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “phase shifters for communications apparatus” are in International Class 9 and “phase shifters for musical instruments” are in International Class 15. Suggestions documented below.
The wording “electronic dictionaries” in the identification of goods in International Class 9 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods and/or services are. Further, this wording could identify goods and/or services in more than one international class. For example, “downloadable electronic dictionaries” are in International Class 9 and “providing online non-downloadable electronic dictionaries” are in International Class 41. Suggestions documented below.
The wording “cinematographic apparatus and instruments” in the identification of goods in International Class 9 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “unexposed cinematographic film” are in International Class 2 and “apparatus for editing cinematographic film” are in International Class 9. Suggestions documented below.
The wording “optical machines and apparatus” in the identification of goods in International Class 9 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, machines for the production of optical lenses and replacement parts therefor” are in International Class 7 and “optical machines and apparatus, namely, optical code readers” are in International Class 9. Suggestions documented below.
The wording “electronic publications” in the identification of goods in International Class 9 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not clearly specify the nature of the publications and the subject matter of the publications. Further, this wording could identify goods and/or services in more than one international class. For example, “downloadable electronic publications in the nature of ebooks in the field of math and science” are in International Class 9 and “providing a website feature non-downloadable publications in the nature of essays and articles in the field of math and science” are in International Class 42. Suggestions documented below.
The wording “LCD screen displays” in the identification of goods in International Class 9 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “LCD large-screen displays” are in International Class 9 and “battery-powered computer games with LCD screen displays” are in International Class 28. Suggestions documented below.
The wording “air driers” in the identification of goods in International Class 11 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “recirculated air driers” are in International Class 7 and “electric air driers” are in International Class 11. Suggestions documented below.
The wording “electric blankets” in the identification of goods in International Class 11 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “electric blankets for medical purposes” are in International Class 10 and “electric blankets for household purposes” are in International Class 11. Suggestions documented below.
The wording “kitchen worktops with integrated sinks for household purposes” in the identification of goods in International Class 11 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “sinks integrated into kitchen worktopos” are in International Class 11 and “kitchen worktops with integrated sinks sold together as a unit” are in International Class 20. Suggestions documented below.
The wording “ventilation apparatus” in the identification of goods in International Class 11 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “medical apparatus, namely, invasive and non-invasive ventilation apparatus and instruments” are in International Class 10 and “ventilation apparatus, namely, turbine ventilators” are in International Class 11. Suggestions documented below.
The wording “commercial intermediation services” in the identification of services in International Class 35 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “Commercial intermediary services relating to the matching of potential private investors with entrepreneurs needing funding” are in International Class 35 and “Commercial business intermediary services in the nature of real estate brokerage” are in International Class 36. Suggestions documented below.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring bicycles,” “retail distributorships in the field of bicycles,” and “retail outlets featuring bicycles.” See TMEP §§1301.01(a)(ii), 1402.11.
Applicant must amend the identification to specify the nature of the wholesale activity that applicant provides (e.g., wholesale distributorships, wholesale services by direct solicitation by sales agents, or wholesale store services). If the services are in the nature of wholesale stores, direct solicitation, or distributorships, the identification should also indicate the field or type of goods offered through the wholesale services, e.g., “wholesale distributorships featuring {indicate specific field, e.g. auto parts, clothing},” “wholesale services by direct solicitation by sales agents in the field of {indicate specific field},” and “wholesale store services featuring {indicate specific field, e.g. auto parts, clothing, jewelry}.” See TMEP §§1301.01(a)(ii), 1402.11.
The wording “agency services for the leasing or rental of buildings” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “advertising agency services, namely, real estate advertising services for the leasing or rental of buildings” are in International Class 35 and “real estate agency services for the leasing or rental of buildings” are in International Class 36. Suggestions documented below.
The wording “rental of buildings” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “rental of buildings for permanent occupancy” are in International Class 36 and “rental of portable buildings” are in International Class 43. Suggestions documented below.
The wording “agency services for the purchase or sale of buildings” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “advertising agency services, namely, real estate advertising services for the purchase or sale of buildings” are in International Class 35 and “real estate agency services for the purchase or sale of buildings” are in International Class 36. Suggestions documented below.
The wording “land management” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “business management services in the field of conserving and preserving land for hunting and fishing” are in International Class 35 and “land management, namely, real estate management of commercial properties and office buildings, rental properties, vacation homes” are in International Class 36. Suggestions documented below.
The wording “agency services for the leasing or rental of land” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “advertising agency services, namely, real estate advertising services for the leasing or rental of land” are in International Class 35 and “real estate agency services for the leasing or rental of land” are in International Class 36. Suggestions documented below.
The wording “purchase and sale of land” in the identification of services in International Class 36 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “advertising agency services, namely, real estate advertising services for the purchase or sale of land” are in International Class 35 and “real estate agency services for the purchase or sale of land” are in International Class 36. Suggestions documented below.
The wording “providing computer programs on data networks” in the identification of services in International Class 42 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods and/or services are. Further, this wording could identify goods and/or services in more than one international class. For example, “computer programs, recorded, for use in electronic storage of data” are in International Class 9 and “Providing user access to computer programs in data networks” are in International Class 42. Suggestions documented below.
The wording “cloud computing services” in the identification of services in International Class 42 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the services is unclear. Further, this wording could identify services in more than one international class. For example, “Promoting the use of the security assurance best practices of others in the field of cloud computing” are in International Class 35 and “Consulting services in the field of cloud computing” are in International Class 42. Suggestions documented below.
The wording “surveying services” in the identification of services in International Class 42 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “surveying services, namely, design of public opinion surveys” are in International Class 35 and “land surveying services” are in International Class 42. Suggestions documented below.
The wording “designing, other than for advertising purposes” in the identification of services in International Class 42 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “designing and developing insurance policies for others” are in International Class 36 and “designing and creating websites for others” are in International Class 42. Suggestions documented below.
The wording “consultancy in the field of energy-saving” in the identification of services in International Class 42 must also be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “consultancy in the field of energy efficiency” are in International Class 35 and “consulting services in the fields of energy measurement to improve energy efficiency” are in International Class 42. Suggestions documented below.
Applicant may substitute the following wording, if accurate (suggested changes in bold):
Class 7: Dishwashers; electric wax-polishing machines {please specify what the electric wax-polishing machines are for, e.g., electric wax-polishing machines for household purposes}; electric washing machines {please specify what the electric washing machines are for, e.g., electric washing machines for household purposes}; electric vacuum cleaners; electric food blenders for household purposes; electric food processors; floor polishing machines for household purposes; electric coffee grinders for household purposes; electric juicers for household purposes; electric meat crushing machines for household purposes {please clarify the nature of the goods, e.g., electric meat crushing machines for household purposes, namely, meat grinders}; electric blenders for household purposes {please specify the type of electric blenders, e.g., electric food blenders for household purposes}; electric door openers
Class 9: Electric shutter openers {the nature of the goods is unclear – please use the common
commercial or generic name of the goods, e.g., electrical shutter openers in the nature of electric window openers}; electrical communication machines and
instruments {the nature of the goods is unclear – please use the common commercial or generic name of the goods, e.g., electrical
communication machines and instruments, namely, single-channel radio communication machines and apparatus for fixed stations}; electrical communication machines and instruments and their
parts {the nature of the goods is unclear – please use the common commercial or generic name of the goods, e.g., marine
radio communication machines and parts therefor}; computer programs {please clarify
the nature of the goods by indicating whether the computer programs are downloadable or recorded and specifying the use of the computer programs, e.g., downloadable computer programs for searching remotely for content on computers and computer networks}; power distribution or and control machines and apparatus {please
specify the type of power distribution and control machines and apparatus, e.g., power distribution and control machines and apparatus, namely, power distributing boxes, power controllers};
electronic lock assemblies ; electric wires and cables; fire alarms; gas leak alarms; anti-theft warning apparatus; measuring or and testing machines
and instruments {please specify the type of measuring and testing machines and instruments, e.g., measuring and testing machines and instruments, namely, level
measuring machines, cement testing machines}; solar batteries; batteries; rotary converters; phase modifiers shifters for communications
apparatus; telephone apparatus; wire communication machines and apparatus {the nature of the goods is unclear – please use the common commercial or generic name
for the goods, e.g., wire-based communication machines and apparatus, namely, telephone apparatus and receivers}; transmission machines and apparatus for telecommunication {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., open-wire transmission machines and apparatus for
telecommunication}; broadcasting machines and apparatus {please specify the type of broadcasting machines and apparatus, e.g., cable broadcasting machines
and apparatus}; radio communication machines and apparatus {the nature of the goods is unclear – please use the common commercial or generic name for the
goods, e.g., radio communication machines and apparatus, namely, walkie talkies}; radio machines and apparatus {please specify the type of radio machines,
e.g., radio machines and apparatus, namely, radio pagers, radio receivers and transmitters}; remote control telemetering machines and instruments; audio frequency devices and apparatus
{the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., audio frequency devices and apparatus, namely
audio-frequency transformers}; video frequency devices and apparatus {the nature of the goods is unclear – please use the common commercial or generic name
for the goods, e.g., video frequency devices and apparatus, namely, video cameras, camcorders, videodisc players, videodisc recorders, digital video players, digital video recorders, digital video
disc players, and digital video disc recorders}; parts and accessories for telecommunication machines and apparatus {please specify the particular parts
and accessories, e.g., parts and accessories for telecommunication machines and apparatus, namely, electric capacitors, electric resistors, electrical transformers}; computers and their
peripherals; electrostatic copying machines; electronic desk calculators; downloadable electronic dictionaries; word processors; electron tubes; semi-conductor elements {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., semi-conductor elements, namely, semi-conductor memories and
memory units}; electronic circuits; photographic apparatus and instruments {the nature of the goods is unclear – please use the common commercial or generic
name for the goods, e.g., photographic apparatus and instruments in the nature of photographic cameras and accessories therefor}; apparatus for editing cinematographic
film apparatus and instruments; optical machines and apparatus, namely, optical code readers; spectacles; 3D spectacles;
satellite receiving apparatus {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., satellite receiving
apparatus being satellite receivers}; downloadable electronic publications in the nature of ebooks in the field of math and science; cameras
for (photography); digital photo frames; dry cells; rechargeable batteries; electrical adapters; bathroom scales;
pedometers; electronic calorie consumption measuring apparatus {the nature of the goods is unclear – please use the common commercial or generic name for the goods,
e.g., electric calorie consumption measuring apparatus, namely, wearable computers in the nature of smartwatches for tracking calorie intake}; electronic measuring apparatus for exercise
intensity {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., electronic measuring apparatus for exercise
intensity, namely, wearable activity tracker}; terminals for televisions {the nature of the goods is unclear – please use the common commercial or generic
name for the goods, e.g., electrical terminal blocks for televisions}; electric chargers {the nature of the goods is unclear – please use the common
commercial or generic name for the goods, e.g., chargers for electric batteries}; flash lamps for cameras; digital still cameras; apparatus for reproduction of sound; radio receivers; audio
cassette players and recorders; optical disk players and recorders; optical disc drives and their parts; lens cleaning disk for optical disk players; hard disk players and recorders {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., hard disk media player and hard disk recorder}; CD
players; portable audio players; MP3 players; audio speakers; parts for audio speakers {please identify the specific audio speaker parts, e.g., parts for audio
speakers, namely, subwoofers}; stereo tuners; audio amplifiers; audio power amplifiers; microphones; slip mats for turntable for record players {the nature
of the goods is unclear – please use the common commercial or generic name for the goods, e.g., non-slip mats specially adapted for turntables being record players}; digital voice recorders;
digital sound processors; headphones; earphones; stereo components {please identify the specific stereo components, e.g., stereo components, namely, amplifiers,
cables, receivers, tuners}; audio mixers; magnetic head cleaners; magnetic tape cleaners; machines and apparatus for the reproduction, recordal of sound and images; television receivers;
plasma display panels; LCD large-screen displays; LCD display panels; antennas; video tuners {the nature of the goods is unclear – please
specify the common commercial or generic name of the goods, e.g., video tuners being television tuners}; LCD projectors; video tape recorders; video tape players; video cameras; camcorders;
video surveillance cameras; DVD video recorders; DVD video players; audio speakers for home theater systems; playing devices for home theater systems {please
specify the type of playing devices, e.g., playing devices for home theater systems, namely, DVD players}; remote controllers for machines and apparatus for the reproduction, recordal of
sound and images; video encoders; head cleaning tapes for video recorders; head cleaning tapes for audio cassette recorders; organic electro-luminescent (EL) displays
Class 10: Facial equipment using ultrasonic waves for household purposes, namely, microdermabrasion apparatus {reworded and moved from Class 11}
Class 11: Water closets; prefabricated bathrooms sold as a unit {the nature of the goods is unclear –
please use the common commercial or generic name for the goods, e.g., prefabricated bathroom enclosures featuring shower and bath cubicles, shower panels, shower mixing valves and faucet extensions
all sold as a unit}; electric lamps and other lighting apparatus {please specify the other types of lighting apparatus, e.g., electric lamps and other
lighting apparatus, namely, lighting installations}; household electrothermic appliances {please specify the type of household electrothermic appliances,
e.g., household electrothermic appliances, namely, space heating apparatus}; air conditioners; toilet stool units with a washing water squirter; microwave ovens for industrial purposes;
boilers, other than parts of non-electric prime movers or engines {please indicate the specific type of boilers, e.g., heating boilers; electric water
heaters; air conditioning apparatus; freezing machines and apparatus {the nature of the goods is unclear – please use the common commercial or generic name for the
goods, e.g., freezing machines and apparatus, namely, freezers}; cooking apparatus and installations for industrial purposes {the nature of the goods is
unclear – please use the common commercial or generic name for the goods, e.g., cooking apparatus and installations for industrial purposes, namely, cooktops}; dish drying machines for
industrial purposes {the nature of the goods is unclear – please use the common commercial or generic name for the goods, e.g., dish drying machines for industrial
purposes, namely, electric dish dryers}; dish disinfectant apparatus for industrial purposes; clothes dryers; humidifiers; air purifiers; electric air driers; electric
fans; water ionizers; electrically heated carpets; electric cooking pots for household purposes; electrical rice cookers; electric apparatus for making coffee; electric cooking stoves for household
purposes; electric stoves; electric foot warmers, namely, electric foot muffs; electric toasters for household purposes; electric thermo pots; electric
blankets for household purposes; electric refrigerators; electric freezers; ice machines for household purposes; electric ovens {please specify
the type of electric ovens, e.g., electric cooking ovens}; microwave ovens; induction heating cookers {the nature of the goods is unclear – please use the
common commercial or generic name for the goods, e.g., induction heating cookers, namely, induction ovens}; futon driers for household purposes; sterilizers for household purposes; hot
plates; electric space cooling apparatus for household purposes; facial equipment using ultrasonic waves for household purposes {the nature of the goods is unclear
– please use the common commercial or generic name for the goods, e.g., “facial equipment using ultrasonic waves for household purposes, namely, microdermabrasion apparatus” which is properly
classified in International Class 10}; hair dryers for industrial purposes; hair dryers for household purposes; household tap-water filters; apparatus for filtering drinking water; bread
making machines for household purposes; electric kettle; electric autoclaves for household purposes {please indicate the specific activity the autoclave is used
for, e.g., electric autoclaves for household cooking purposes}; electric roasters for household purposes; electric deep fryers for household purposes; electric cookers for household purposes
{please specify the type of electric cookers, e.g., electric slow cookers for household purposes}; electric cooking pots for household purposes; ventilating
fans for household purposes; electric facial equipment for household purposes {please specify the type of electrical facial equipment, e.g., electric facial
equipment for household purposes, namely, facial and steam facial apparatus}; electric facial steamers for household purposes; electric incense burners for household purposes; sinks integrated into kitchen worktops with integrated sinks for household purposes; ventilation apparatus, namely, turbine ventilators;
air-conditioning installations; air blowing installations {the nature of the goods is unclear – please use the common commercial or generic name for the goods,
e.g., air blowing installations in the nature of air conditioners}; electric deodorizers for household purposes {please specify the type of electric
deodorizers, e.g., electric air deodorizers for household purposes}; floor heating apparatus; dish drying machines {the nature of the goods is unclear –
please use the common commercial or generic name for the goods, e.g., dish drying machines in the nature of electric dish dryers}; ionization apparatus for the treatment of air; garment
steamers; electric sandwich makers; cartridges for water purifying apparatus for household purposes {please specify the type of cartridges, e.g., cartridges for
water purifying apparatus for household purposes, namely, membrane filter cartridges}
Class 35: Advertising and publicity services; online advertising on a computer network; presentation of goods on communication media, for
retail purposes {the nature of the services is unclear – please use the common commercial or generic name for the services, e.g., Providing television home shopping
services in the field of general consumer merchandise}; rental of advertising space; commercial information and advice for consumers (consumer advice shop) in the
choice of products and services; marketing research or analysis; provision of information concerning commercial sales; commercial intermediation intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; compilation of information into computer databases;
retail services or wholesale store services for featuring bicycles; retail services or wholesale store services for featuring electrical machinery and apparatus; retail services or wholesale store services for featuring kitchen equipment, cleaning tools and washing utensils;
retail services or wholesale store services for featuring cosmetics, toiletries, dentifrices, soaps
and detergents; retail services or wholesale store services for featuring paper and stationery;
retail services or wholesale store services for featuring sports goods; retail services or wholesale store services for featuring photographic machines and apparatus and photographic
supplies; retail services or wholesale store services for featuring woven fabrics and bedding;
retail services or wholesale store services for featuring food and beverages; retail services or wholesale store services for featuring processed food; retail services or wholesale store services for featuring musical instruments and records; retail services or wholesale store services for featuring clocks, watches and spectacles, eyeglasses and goggles;
retail services or wholesale store services for featuring building materials; business consultancy
and business information services provided for the electric energy industry in relation to electric consumption {amendment suggested for
clarity}
Class 36: management of buildings; real estate agency services for the leasing or rental of buildings; rental of buildings for permanent occupancy; purchase and sale of buildings {the nature of the services is unclear – please use the common commercial or generic name of the services, e.g., real estate agency services for the purchase and sale of buildings}; real estate agency services for the purchase or sale of buildings; real estate appraisal; providing real estate information; land management, namely, real estate management of commercial properties and office buildings, rental properties, and vacation homes; real estate agency services for the leasing or rental of land; leasing of land; real estate agency services for the purchase and sale of land; real estate agency services for the purchase or sales of land
Class 37: Construction services {please specify the type of construction services, e.g., Construction services, namely construction of buildings}; construction consultancy
Class 42: Design, programming and maintenance of computer software; providing user access to computer programs
on in data networks; rental of computers; consulting services in the field of cloud computing services; rental of web servers;
architectural design services; land surveying services; designing, other than for advertising purposes and creating websites for others; consultancy
in the field of energy-saving energy measurement to improve energy efficiency; consultancy relating to design, programming and maintenance of computer software; computer
software design; creating and maintaining web sites for others; hosting computer sites {the nature of the services is unclear – please use the common commercial or
generic name for the services, e.g., hosting the websites of others on a computer server for a global computer network}; maintenance of computer software; monitoring of computer systems by
remote access {please specify the purpose of the monitoring services, e.g., monitoring of computer systems by remote access to ensure proper functioning};
rental of computer software; consultancy in connection with in the field of design and development of hardware and software for connection to,
management of, operating and using computer networks {amendment suggested for clarity}; SAAS services featuring online application software {please specify the function of the programs, e.g., Software as a service (SAAS) services featuring online application software for use in database management};
providing web hosting platform {please specify the purpose or intended user of the web hosting platform, e.g., providing a web hosting platform for electronic
commerce}; technical support relating to the design, programming and maintenance of software {please specify the nature of the technical support services,
e.g., technical support relating to the design, programming and maintenance of software, namely, troubleshooting of computer software problems}; technical support relating to the design,
programming and maintenance of computer network systems {please specify the nature of the technical support services, e.g., technical support relating to the
design, programming and maintenance of software, namely, 24/7 monitoring of network systems and notification of related events and alerts}; design, programming and maintenance of programs for
electronic calculators {the nature of the services is unclear – please amend to indicate that the programs are computer programs, e.g. design, programming and
maintenance of computer programs for electronic calculators}; designing of machines, apparatus, instruments (including their parts) or systems composed of such
machines, apparatus and instruments; design and development of computer hardware; testing or research on machines, apparatus and instruments {please amend to
clarify whether the services encompass testing, research, or both, e.g., testing the functionality of machines and research on machines}; design and development of computer hardware; research
on building construction or city planning; testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing or
research on machines, apparatus and instruments {duplicate entry}
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 – ADVISORY
(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 13 classes; however, applicant submitted a fee(s) sufficient for only seven class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
OPTION TO DELETE DUAL FILING BASES
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
(571) 272-5234
chioma.oputa@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.
