Offc Action Outgoing

ESIM

Somasundaram Ramkumar

U.S. TRADEMARK APPLICATION NO. 88282531 - ESIM - N/A

To: Somasundaram Ramkumar (ramkumar@ramkumarmail.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88282531 - ESIM - N/A
Sent: 3/29/2019 3:50:07 PM
Sent As: ECOM123@USPTO.GOV
Attachments: Attachment - 1
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

U.S. APPLICATION SERIAL NO.  88282531

 

MARK: ESIM

 

 

        

*88282531*

CORRESPONDENT ADDRESS:

       SOMASUNDARAM RAMKUMAR

       28, SOUTH STREET, TALLAKULAM,

       MADURAI TAMILNADU

       625002

       INDIA

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: Somasundaram Ramkumar

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       N/A

CORRESPONDENT E-MAIL ADDRESS: 

       ramkumar@ramkumarmail.com

 

 

 

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: 3/29/2019

 

 

INTRODUCTION

 

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 RESULTS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

  • Prior Filed Application
  • Section 2(e)(1) Refusal – Merely Descriptive
  • Request for Additional Information About Goods
  • Amendment of Identification of Goods Required

 

PRIOR FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87788635 (ESIMSMART) precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature of Applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The applicant's mark is ESIM for "Computers, Laptop Computers, Tablet PC, Camera, Notebook, SmartWatch, Fixed Wireless Phone, Televisions, Fixed Wireless Terminal, Simcards ( Subscriber Identity Module cards ), Reduced format of Simcard, Standardised Simcard, Reduced format of Standardised Simcard, Simsocket of Mobile Phone, Reduced format of Simsocket of Mobile Phone, Standardised Simsocket of Mobile Phone, Reduced format of Standardised Simsocket of Mobile Phone, Telephones including Telephones for domestic use, Landline Telephone, Cordless Telephones, Car Telephones, Electronic Telephones, VOIP Phone, Video Telephones, Mobile Telephones, Cellular Phone, Mobile Phone, Cell Phone, Tablet Smartphone, Touch Phone, Smartphone, Qwerty Messaging Phone, Multimedia Phone, Multiple sim Phone, Plural sim Phone, Dual sim Phone, Satellite Mobile Telephones, Satellite Cellular Telephones, Satellite Mobile Phone, Plural sim Television, Dual sim Television, Plural sim Computer, Dual sim Computer, Plural sim Camera, Dual sim Camera, Plural sim SmartWatch, Dual sim SmartWatch, Memory Integrated Circuits, Plural sim Fixed Wireless Phone, Dual sim Fixed Wireless Phone, Memory Chips, Plural sim Fixed Wireless Terminal, Dual sim Fixed Wireless Terminal, Integrated Circuits, network communication equipment, optical communication equipment".

 

Here, the attached evidence shows that the wording "ESIM" is a commonly used acronym for "Embedded Subscriber Identity Module" or "Embedded SIM" (See attached evidence from acronymfinder.com).  The wording "ESIM" refers to digital SIM technology that is built into a phone or other electronic device that allows the user to authenticate its identity to a telecommunications carrier without the need for a physical SIM card (See attached evidence from digitaltrends.com, gsma.com, pocket-lint.com, and usmobile.com).  In this case, the wording "ESIM" immediately conveys and merely describes Applicant's identified goods, or a feature of those goods, namely, embedded SIM cards and other electronic goods featuring embedded SIM cards or embedded SIM card readers or slots. 

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

REQUEST FOR ADDITIONAL INFORMATION ABOUT GOODS

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and wording appearing in the mark: 

 

(1)       Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record; 

 

(2)       If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement; and

 

(3)       Applicant must respond to the following questions: 

 

·       Are any of Applicant's goods eSIMs and/or embedded SIMS?  Explain and provide examples.

·       Do any of Applicant's goods feature eSIMs and/or embedded SIMS?  Explain and provide examples.

·       Do any of Applicant's goods use eSIM or embedded SIM technology?  Explain and provide examples.

·       Do applicant’s competitors use the wording "ESIM" to advertise similar goods?  Explain and provide examples.

·       Who is the typical consumer of applicant’s goods?  Explain.

·       Where are applicant’s goods typically purchased?  Provide examples of online and brock-and-mortar store venues.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

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. 

 

 

AMENDMENT OF IDENTIFICATION OF GOODS REQUIRED

 

The identification of goods is unacceptable because it contains a significant amount of indefinite wording and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, Applicant must clarify the nature of its fixed wireless phones, touch phones, Qwerty messaging phones, dual sim computers, plural sim phones, and memory chips.  Applicant must also specify its network communication equipment and optical communication equipment. 

 

Applicant may adopt the following identification, if accurate: 

 

International Class 009:  "Computers;, Laptop Computers;, PC Tablet PC;, Camera;, Notebook computers;, SmartWatch Smartwatches;, Fixed Wireless Phone in the nature of fixed location telephones;, Televisions;, Fixed Wireless Terminal in the nature of fixed location telephones;, Simcards ( Subscriber Identity Module cards ) SIM cards in the nature of subscribed identity module cards;, Reduced format of Simcard miniature SIM cards in the nature of subscribed identity module cards;, Standardised SIM cards in the nature of subscribed identity module cards Simcard;, Reduced format of miniature Standardised SIM cards in the nature of subscribed identity module cards Simcard;, sockets for SIM cards for mobile phones in the nature of SIM card readers Simsocket of Mobile Phone;, miniature sockets for SIM cards for mobile phones in the nature of SIM card readers Reduced format of Simsocket of Mobile Phone;, Standardised sockets for SIM cards for mobile phones in the nature of SIM card readers Simsocket of Mobile Phone;, miniature standardised sockets for SIM cards for mobile phoens in the nature of SIM card readersReduced format of Standardised Simsocket of Mobile Phone;, Telephones, namely, including Telephones for domestic use;, Landline Telephone;, Cordless Telephones;, Car Telephones in the nature of telephones for vehicles;, Electronic Telephones;, Voice over internet protocol (VOIP) telephonesPhone;, Video Telephones;, Mobile Telephones;, Cellular Phone;, Mobile Phone;, Cell Phone, Tablet Smartphone;, Touch Phone in the nature of mobile phones featuring touch screens;, Smartphone;, Qwerty Messaging Phone in the nature of cellphones featuring keyboards for text messaging;, Multimedia Phone in the nature of smart phones;, mobile phones featuring multiple SIM card portsMultiple sim Phone;, Plural sim Phone;, mobile phones featuring two SIM card portsDual sim Phone;, Satellite Mobile Telephones in the nature of satellite transceivers;, Satellite Cellular Telephones in the nature of satellite transceivers;, Satellite Mobile Phone in the nature of satellite transceivers;, televisions featuring multiple SIM card portsPlural sim Television;, televisions featuring two SIM card portsDual sim Television;, computers featuring multiple SIM card portsPlural sim Computer;, computers featuring two SIM card portsDual sim Computer;, cameras featuring multiple SIM card portsPlural sim Camera;, cameras featuring two SIM card portsDual sim Camera;, smartwatches featuring multiple SIM card portsPlural sim SmartWatch;, smartwatches featuring two SIM card portsDual sim SmartWatch;, Memory Integrated Circuits featuring computer memory;, fixed location telephones featuring multiple SIM card portsPlural sim Fixed Wireless Phone;, fixed location telephones featuring two SIM card portsDual sim Fixed Wireless Phone;, Memory Chips in the nature of memory cards;, Plural sim Fixed Wireless Terminal;, Dual sim Fixed Wireless Terminal;, Integrated Circuits;, network communication equipment, namely, [specify network communication equipment within this International Class, e.g., telecommunications base station equipment for cellular and fixed networking applications; integrated circuits; reconfigurable data processors];, optical communication equipment, namely, [specify optical communication equipment within this International Class, e.g., cable television transmitters, digital transmitters, optical data links, optical receivers]"

 

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.

 

 

Applicant Encouraged to Seek Trademark Counsel

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

 

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.

 

 

If the applicant has any questions or requires assistance in responding to this Office Action, please contact the examining attorney at the contact information provided below.  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. 

 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@uspto.gov

 

 

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.  

 

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.

 

 

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U.S. TRADEMARK APPLICATION NO. 88282531 - ESIM - N/A

To: Somasundaram Ramkumar (ramkumar@ramkumarmail.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88282531 - ESIM - N/A
Sent: 3/29/2019 3:50:09 PM
Sent As: ECOM123@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/29/2019 FOR U.S. APPLICATION SERIAL NO. 88282531

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 3/29/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@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.

 

 


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