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: 5/13/2019

 

 

 

 

 

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.  

 

This Office action is supplemental to and supersedes the previous Office action issued on March 15, 2019, in connection with this application.  The assigned trademark examining attorney omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, upon further review, the examining attorney should have issued a Section 2(d) refusal as to the registration discussed below.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action, in addition to the three requirements raised in the Office action dated March 15, 2019, which are also included below, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a). 

 

Summary of Issues Applicant Must Address

• Section 2(d) Refusal – Likelihood of Confusion
• Requirement for Acceptable Identification of Goods and Services
• Requirement for Additional Information
• Requirement for Copy of Foreign Registration

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5485224.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant has applied to register J-QUAD DYNAMICS in standard-character form for:

 

computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable music files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 9. 

 

design, programming or maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing or research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 42.

 

The registered mark is JQUAD in standard-character form for:

 

On-line retail store services featuring tools and automotive parts, in Class 9.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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.

 

Comparison of the Marks

 

In this case, the applicant’s mark J-QUAD DYNAMICS and the registrant’s mark JQUAD are similar in commercial impression.

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))). 

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In this case, the first term in the applicant’s mark is virtually identical to the registrant’s entire mark.  This term differs in appearance from the registered mark merely by the inclusion of a hyphen.  The terms would be pronounced the same.  The combination of J with QUAD appears to be arbitrary and does not have any particular meaning in the context of the relevant goods and services.  Thus, consumers would view these terms as having the same meaning.

 

The applicant’s mark differs from the registered mark by the additional term DYNAMICS.  Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The term “dynamics” refers to a branch of mechanics.  See the attached dictionary definition.  This term has a suggestive meaning in the context of the applicant’s goods and services, and is thus entitled to less weight in comparing the marks.  Notably, this term would not change whatever meaning is attributed to the term J-QUAD.

 

Thus, when viewed in their entireties, the marks are similar in commercial impression.  Consumers would assume that the applicant’s mark identifies a particular line of software related goods and services from the same source as the registrant’s retail store services.

 

Comparison of the Goods and Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Similarly, in this case, consumers are likely to assume that because the applicant’s software and manuals (in various forms) are intended for use with electronic control units (ECU) for automobile engines, and the goods featured by the registrant’s services are broad enough to include electronic control units (ECU) for automobile engines that the goods and services originate from the same source.

 

Additionally, providers of retail store services featuring auto parts also commonly offer ancillary services, including checking software error codes and equipment rental services.  Thus, consumers are likely to assume that the applicant’s other services originate from the same source as the registrant’s services.

 

Internet Evidence

 

The applicant is referred to the attached Internet printouts from four on-line retail stores that feature auto parts.  These printouts indicate that these sources feature software and manuals, and also offer ancillary services, including checking software error codes and equipment rental services.

 

Thus, this evidence establishes that the relevant goods and services are provided through the same trade channels for use by the same classes of consumers.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Third-Party Registrations

 

The trademark examining attorney has also attached evidence from the USPTO’s X-Search database consisting of three third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case.  Specifically, this evidence consists of one registration that includes both retail store services featuring auto parts, and software for operating vehicles, along with two registrations that include retail store services featuring auto parts, other types of software.  Thus, this evidence shows that the parties’ goods and services are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Since the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services.  Therefore, applicant’s mark is not entitled to registration, and registration is refused under Section 2(d).

 

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

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Identification and Classification of Goods and Services – As to Specific Goods and Services in Classes 9 and 42

 

Applicant’s goods and services are identified as:

 

computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable music files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 9.

 

design, programming or maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing or research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 42.

 

This requirement is limited to the wording highlighted above in bold.

 

Class 9

 

The wording “computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control” in the identification of goods must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable and recorded software in Class 9 and on-line, non-downloadable software in Class 42.  Because the identification already includes non-downloadable software and programs in Class 42, the suggested amendments below are limited to Class 9.

 

The wording “downloadable music files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control” in the identification of goods is indefinite and must be clarified because music files feature music, not any information that would encompass how to operating computer software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Since the identification already includes downloadable musical sound recordings and other recordings featuring the operation of the specified computer software, no suggestions for amendment are provided.

 

The wording “downloadable video files and movie files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control” in the identification of goods is indefinite and must be clarified because video and movie files and computer software for the specified purpose are two different types of goods.  The applicant must confirm that these files feature instruction regarding the operation of the specified computer software, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Similarly, the applicant must amend the wording “recorded video discs and video tapes featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control” to confirm these goods feature instruction regarding the operation of the specified computer software, if accurate. 

 

Class 42

 

Applicant has included the term “or” in the identification of services.  However, this term is generally not accepted in identifications when, as here, it is unclear whether applicant intends to use the mark, on all the identified services.  See TMEP §1402.03(a).  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 “or” with “and” in the identification of services, if appropriate, or rewrite the identification with the “or” deleted and the services specified using definite and unambiguous language. 

 

The wording “providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass recorded software and programs in Class 9 and on-line software and programs in Class 42.  Because the identification already includes computer software and programs in Class 9, the suggested amendments below are limited to Class 42.

 

To summarize, applicant may adopt any or all of the following identifications of goods and services, if accurate:

 

downloadable and recorded computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable and recorded computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 9.

 

design, programming and maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing and research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 42.

 

See TMEP §1402.01.

 

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’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Information Requirement – As to Specific Services in Class 42

 

This requirement is limited to the following services:

 

providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control, in Class 42.

 

To permit proper examination of the application, applicant must submit additional information about applicant’s services because the nature of such services is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The requested information should include fact sheets, brochures, and/or advertisements and promotional materials.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.

 

Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the services will not satisfy this requirement for information.

 

In particular, this information must explain how the specified software is able to control automobile engines without being downloaded.

 

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.  Merely stating that information about the services is available on applicant’s website, or any other website, is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); see TMEP §710.01(b). 

 

Foreign Registration

 

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). 

 

Response Guidelines

 

Because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

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. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/13/2019 FOR U.S. APPLICATION SERIAL NO. 88303184

 

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 5/13/2019 (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.