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: 4/15/2019

 

 

 

 

 

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.  

 

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.

 

 

 

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

 

• Foreign registration required;
• Amendment of identification.

 

Foreign Registration Required

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  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, the 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.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  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).

 

Identification of Services: International Class 035

 

The wording “Retail and wholesale services, online retail and wholesale services, and online trading services, all connected with the sale and/or purchase of home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books” in the identification of services is indefinite and must be clarified because it does not clearly identify services in this class for the benefit of others.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:  “Retail and wholesale store services, online retail and wholesale store services, and online trading services in with the seller posts products to be auctioned and bidding is done via the Internet, all in the field of  home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books.”

 

The wording “purchasing services connected with home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books” requires amendment because it does not clearly identify services performed for others. Applicant may adopt the following wording, if accurate: “procurement services, namely, purchasing home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books for others.”

 

The wording “information, advisory and consultancy services in relation to all of the aforesaid” is unacceptable because it does not clearly identify the type of information, advisory, and consulting services. Applicant must amend the wording to specifically identify services in this class using the common commercial name.

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

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.

 

Identification of Services: International Class 036

 

The wording “conducting valuations” in the identification of services is indefinite and must be clarified because it does not specify the type of valuation services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Financial valuations.”

 

The wording “valuation services in relation to home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books” in the identification of services is indefinite and must be clarified because it does not specify the type of valuation services.  Applicant may substitute the following wording, if accurate:  “Financial valuations of home entertainment and personal entertainment products, personal consumer electronic devices, telecommunications products, recorded media, sound recordings, music recordings, video recordings, audio visual recordings, CDs, DVDs, optical and magneto-optical discs, disks, electronic storage media, memory cards, video games, computer games, computer programs, computer software, computers and computing equipment and parts and fittings therefor, portable computers, laptop, notebook and tablet computers, video game machines and parts and fittings therefor, phones, smartphones, smartwatches, electronic book readers, headphones, speakers, smart speakers, audio equipment and parts and fittings therefor, video equipment and parts and fittings therefor, television and radio equipment and parts and fittings therefor, cameras and parts and fittings therefor, printed matter and books.”

 

The wording “information, advisory and consultancy services in relation to all of the aforesaid” is unacceptable because it does not clearly identify the type of information, advisory, and consulting services. Applicant must amend the wording to specifically identify services in this class using the common commercial name.

 

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

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

 

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.

 

 

 

 

 

Shannon M. Twohig

/Shannon M. Twohig/

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov (informal communications)

phone: (571)272-8855

 

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 4/15/2019 FOR U.S. APPLICATION SERIAL NO. 88286531

 

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 4/15/2019 (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.