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: 6/27/2019

 

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.

 

SUMMARY OF ISSUES:

• Prior Pending Applications
• Section 2(d) – Likelihood of Confusion Refusal (Partial)
• Certificate of Foreign Registration Required
• Identification of Goods/Services
• Multiple-Class Application

 

PRIOR-FILED APPLICATION(S)

 

The effective filing dates of pending U.S. Application Serial Nos. 87769694, 87769697, 88069089, 88069130, 85734726 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1285022, 1932724, 5737207 and 3641317.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

SIMILARITY OF THE MARKS

 

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).

 

In this case, applicant has applied to register the mark BELL, with a design.

 

The registered marks are: U.S. Registration No. 1285022 BELL, in standard character form; U.S. Registration No. 1932724 BELL OUTDOOR, with a design; U.S. Registration No. 5737207 BELL INTEGRATOR, in standard character form; U.S. Registration No. 3641317 BELLS, in standard character form.

 

The marks are similar because each possesses the identical term “BELL” within the respective marks. Note, U.S. Registration No. 3641317 possesses the term “BELLS”, however, this is merely the plural of the term “BELL” and thus the marks are similar.

 

The main difference between the marks is the additional wording “OUTDOOR” in U.S. Registration No. 1932724 and “INTEGRATOR” in U.S. Registration No. 5737207. However, these terms are merely descriptive of the respective goods and services and have thus been disclaimed. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the term “BELL” is the dominant portion of the marks.

 

Lastly, the design elements in the applied-for mark and U.S. Registration No. 1932724 BELL OUTDOOR does not negate the similarities between the marks because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Accordingly, the marks are similar under the Trademark Act.

 

RELATEDNESS OF THE GOODS/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 compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant’s goods and services are, in pertinent part, “electric apparatus, equipment and instruments including control units, switches and timers,” “electrical equipment including switches and meters,” “computer programs and software,” and “cloud-based and non-downloadable and downloadable software applications (apps)” in International Class 009.

 

The goods in U.S. Registration No. 1285022 BELL and U.S. Registration No. 1932724 BELL OUTDOOR are “Electrical Wiring Devices-Namely, Electrical Outlet and/or Junction Boxes, Adaptors, Extensions, Covers and Cover Plates Therefor, Electrical Switches, Electrical Plugs and Receptacles, 3-Wire Grounding Units and Wall Plates for Electrical Switches and Outlets” and “electrical and electronic components, namely electrical box covers; receptacles; adapters; switches; plugs; electrical conduit bodies; outlet boxes; circuit interrupters, and parts of all of the above” in International Class 009.

 

The services in U.S. Registration No. 5737207 BELL INTEGRATOR are “Computer services, namely, designing and developing computer software applications and hardware for others and related information technology consultation; hosting of computer software of others; hosting of the digital content on internet; design, development, and design and development consulting services relating to computer programs and hardware; installation, repair and maintenance of software; computer software engineering; computer system analysis; integrating computer systems, networks and software; technical consultation in the design and development of computer software, computer networks, and global communication networks; technical research in the field of information technology related to computer hardware and software design and growth, mobile application software development, automated business processes, business and data analytics, business management and cloud computing; research and development of new products for others; recovery of computer data; monitoring of computer systems by remote access to ensure proper functioning; testing operation and functionality of software, computers and servers; troubleshooting support services, namely, troubleshooting in the nature of diagnosing and repairing computer software problems; quality control for others in the field of computer software; computer virus protection services; debugging, maintenance and updating of computer software; providing a website featuring information technology information in the field of computer software and computer programming; providing off-site data backup, electronic data storage and electronic storage services for archiving electronic data; providing temporary use of online non-downloadable software applications, development platforms and development tools for web-based and mobile applications for database management, business management, purchase order processing, knowledge management, creating business proposals, project management, facilitating electronic business transactions, social networking, augmented reality presentations and experiences, and collecting and analyzing data in the fields of branding, marketing, customer relationship management, sales, and cloud computing; software-as-a-service (SAAS) featuring computer software and on-demand applications that enable hosting, implementation, operation, and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across electronic commerce channels, including sourcing, procurement and fulfillment, and the conduct of business intelligence, including reporting, business analytics, resource planning, simulation, and decision support; software as a service (SAAS) featuring software to allow users to perform electronic business transactions, software for database management, content management, workforce management, inventory management, virtualization, simulations and augmented reality, social networking, operating on-line market place, order tracking, teleconferencing, personal data protection, collecting and analyzing data in the fields of business, marketing, advertising, brand development, customer service, education, healthcare, transportation, communications and telecommunications, management of supply chains and orders, enterprise and resource planning, cloud computing; platforms as a service (PAAS) featuring computer software platforms for retrieving, tracking, analyzing and managing data, and for business analytics and database management in the fields of ecommerce and digital media delivery; providing infrastructure as a service (IaaS) featuring temporary use of online non-downloadable computer software platforms for creating, managing, and deploying cloud computing environments and services, for monitoring, administration and management of cloud computing information technology, application systems, computer disaster recovery, virtualization technologies, wireless networks, and routing networks; providing databases as a service, namely, database development services, cloud hosting of computer databases, and maintenance of online databases for others; providing online non-downloadable database software to manage, monitor, track and organize data; providing virtual computer systems and virtual computer environments through cloud computing; cloud computing featuring computer software for project management, project portfolio management, strategy and process management, idea management, demand management, proposal management, capacity management, resource management, knowledge management, and financials management; cloud computing services featuring computer software for project analytics, project costing, billing, supply chain management, inventory and fulfillment management, patient management, application development, software integration, user security management, data security management, and security audit and session management; technical support services, namely, providing cloud software testing, troubleshooting of problems of computer software used for cloud auditing, and optimization” in International Class 042.

 

The services in U.S. Registration No. 3641317 BELLS are “Providing temporary use of non-downloadable computer software operated over a global computer network for managing the collection and submission of contract data requirements during the design, construction, production, and post-delivery stages of a vessel” in International Class 042.

 

U.S. Registration No. 1285022 BELL and U.S. Registration No. 1932724 BELL OUTDOOR

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe “electric apparatus, equipment and instruments including control units, switches and timers,” and “electrical equipment including switches and meters” which presumably encompasses all goods of the type described, including registrant(s)’s more narrow “Electrical Wiring Devices-Namely, Electrical Outlet and/or Junction Boxes, Adaptors, Extensions, Covers and Cover Plates Therefor, Electrical Switches, Electrical Plugs and Receptacles, 3-Wire Grounding Units and Wall Plates for Electrical Switches and Outlets” and “electrical and electronic components, namely electrical box covers; receptacles; adapters; switches; plugs; electrical conduit bodies; outlet boxes; circuit interrupters, and parts of all of the above.”  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).  Thus, applicant’s and registrant’s goods 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 goods and/or services are related.

 

U.S. Registration No. 5737207 BELL INTEGRATOR

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe “computer programs and software,” and “cloud-based and non-downloadable and downloadable software applications (apps)”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “providing temporary use of online non-downloadable software applications, development platforms and development tools for web-based and mobile applications for database management, business management, purchase order processing, knowledge management, creating business proposals, project management, facilitating electronic business transactions, social networking, augmented reality presentations and experiences, and collecting and analyzing data in the fields of branding, marketing, customer relationship management, sales, and cloud computing; software-as-a-service (SAAS) featuring computer software and on-demand applications that enable hosting, implementation, operation, and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across electronic commerce channels, including sourcing, procurement and fulfillment, and the conduct of business intelligence, including reporting, business analytics, resource planning, simulation, and decision support; software as a service (SAAS) featuring software to allow users to perform electronic business transactions, software for database management, content management, workforce management, inventory management, virtualization, simulations and augmented reality, social networking, operating on-line market place, order tracking, teleconferencing, personal data protection, collecting and analyzing data in the fields of business, marketing, advertising, brand development, customer service, education, healthcare, transportation, communications and telecommunications, management of supply chains and orders, enterprise and resource planning, cloud computing.”.  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).  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 goods and/or services are related.

 

U.S. Registration No. 3641317 BELLS

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe “computer programs and software,” and “cloud-based and non-downloadable and downloadable software applications (apps)”, which presumably encompasses all goods and/or services of the type described, including  registrant(s)’s more narrow “providing temporary use of non-downloadable computer software operated over a global computer network for managing the collection and submission of contract data requirements during the design, construction, production, and post-delivery stages of a vessel.”  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).  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 goods and/or services are related.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Thus, upon encountering the respective marks, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act.

 

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

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (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, 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.

 

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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  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), 806.03(h).  

 

IDENTIFICATION OF GOODS/SERVICES

 

Applicant must clarify some of the wording in the identification of goods and services 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 the exact nature of the goods and services.  Further, this wording could identify goods and services in more than one international class.  In addition, some of the goods and services appear to be misclassified.

 

Applicant should note that any wording in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following classification and identification, if accurate:

 

CLASS 007: Equipment and instruments for the generation of power, namely, _____________________{please state the common commercial name of the equipment and instruments, e.g. mobile electric power generators, steam-operated power generators}; wind turbine electricity generators; solar-powered electricity generators; power generating apparatus, namely, _________________{please state the common commercial name of the power generating apparatus, e.g. gas-operated power generators}; electric power generators; machines for generating power, namely, __________________{please state the common commercial name of the machine, e.g. electric power generators for indoor use}; auxiliary power units for generating electric current 

 

CLASS 009:  Electrical charging stations for charging electric vehicles (EVs); apparatus and cables for use in charging electric vehicles (EVs); electronic communications networks for monitoring and managing electrical charging stations comprised of computer hardware and recorded software, cables, computer network adapters, switches, routers and hubs for monitoring and managing electrical charging stations; computer hardware and recorded software for charging electric vehicle (EV) batteries; Recorded communications software for monitoring and managing electrical charging stations and networks; computer hardware and recorded software for processing financial payments for electricity; downloadable databases, data sets and data files and software relating to in the field of electric vehicle (EV) driver behaviour and downloadable software for _________________{please state the function of the software, e.g. for use as a spreadsheet} in the field of electric vehicle (EV) driver behaviour; downloadable databases, data sets and data files and software relating to in the field of electric autonomous vehicle (AV) ride sharing / hailing services and downloadable software for _______________________________{please state the function of the software, e.g. for use as a spreadsheet} in the field of electric autonomous vehicle (AV) ride sharing / hailing services; downloadable databases, data sets, data files and software for managing freight transportation by truck and autonomous vehicles (AVs); downloadable computer programs and software for __________________{please clarify the function of this software, e.g. processing, managing} artificial intelligence (AI), machine learning, and deep learning; downloadable computer programs and software for data management using artificial intelligence (AI), machine learning, and deep learning; Battery energy storage system (BESS) comprised of ________________{please state what the system is comprised of, e.g., rechargeable batteries, rechargers for electric accumulators}and equipment for storage and supply of electricity to electric vehicle (EV) charging stations and equipment, namely, ______________{please state the common commercial name of the equipment} for storage and supply of electricity to electric vehicle (EV) charging stations; battery energy storage system (BESS) and equipment comprised of ________________{please state what the system is comprised of, e.g., rechargeable batteries, rechargers for electric accumulators} for use in storage, supply, transmission and stabilization of electricity supplied by or to an electric power grid or other sources of electric power generation and equipment, namely, ____________________{please state the common commercial name of the equipment} for use in storage, supply, transmission and stabilization of electricity supplied by or to an electric power grid or other sources of electric power generation; Recorded computer software for monitoring, optimizing and regulating the storage, transmission and discharge of energy to and from the battery energy storage system (BESS), electricity generating wind mills, wind power plants, wind turbines and other wind operated machines; electric apparatus, equipment and instruments including ,namely, control units for ______________{please state the function of the control units}, switches and timers; control and monitoring equipment, namely, _________________{please state the common commercial name of the equipment, e.g., access control and alarm monitoring systems}; computer hardware and recorded software for controlling and monitoring constant voltage, frequency, phase conditions, rotor speed, efficiency and thickness of brake pads, temperature, wind direction and wind speed; vibration sensors for installation in mill housings; electrical equipment, including namely, switches and meters; Electricity generating solar cells and panels; solar energy collectors for electricity generation, namely, ________________{please state the common commercial name of the goods, e.g. solar panels for the production of electricity; electric apparatus, equipment and instruments including control units, switches and timers; control and monitoring equipment; computer hardware and recorded software for controlling and monitoring constant voltage, assessing, managing and improving energy supply; electrical equipment including switches and meters; Plastic cards; encoded smart cards containing programming used for accessing and making payments at electric vehicle charging stations and car wash facilities and smart card readers; stored value cards in the nature of magnetically encoded charge cards; data cards, namely, interface cards for data processing equipment in the form of printed circuits; semi-conductor chips (chips); apparatus, including namely, electronic integrated circuits, magnetic strips in the nature of magnetic strip readers or and memory silicon chips; Magnetic coded membership cards containing for use in customer loyalty, or subscription plans, or ride sharing / hailing schemes and freight transportation schemes or other information; digital recording media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting ___________________ {indicate subject matter}; Recorded computer programs and software for _____________________{please state the function of the programs and software}; cloud-based and non-downloadable and downloadable computer software applications for __________________ {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for  __________________________ {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; online tools including tools to calculate the nearest electric vehicle (EV) charging station and car washing facilities; online portals to access user accounts; Recorded interactive education software featuring instruction in _________________{please specify subject matter}; downloadable electronic publications including those distributed online in the nature of ___________________{indicate specific nature of publication, e.g. magazines, manuals} in the field of _________________{indicate subject matter of publication}

 

CLASS 036: Issuing stored value cards

 

CLASS 037:  Installation, integration, maintenance and repair of electric charging station infrastructure for the storage and supply of electricity to electric vehicles (EVs); vehicle battery charging; Rental of battery energy storage systems (BESS) and equipment for use in storage and supply of electricity to electric vehicle (EV) charging stations; vehicle cleaning services; car wash services; car washing and detailing services 

 

CLASS 041: Providing an on-line portal for customers to access user accounts to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; publishing of electronic publications

 

CLASS 042: Providing temporary use of a non-downloadable web application for ___________________ {indicate the function of web-based software application, e.g., time management, sharing web-based documents, collaborating on shared documents, etc.}; Providing temporary use of on-line non-downloadable software tools to calculate the nearest electric vehicle (EV) charging station and car washing facilities

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 six classes; however, applicant submitted a fee(s) sufficient for only three 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 Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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.

 

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.

 

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.

 

 

 

Udeme U. Attang

/Udeme U. Attang/

Examining Attorney

Law Office 115

571-272-9286

udeme.attang@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 6/27/2019 FOR U.S. APPLICATION SERIAL NO. 88374691

 

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 6/27/2019, 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. 

 

Udeme U. Attang

/Udeme U. Attang/

Examining Attorney

Law Office 115

571-272-9286

udeme.attang@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.