To: | Autel Intelligent Technology Corp., Ltd. (tm@bayramoglu-legal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88390592 - MAXIFIX - N/A |
Sent: | 6/18/2019 9:29:02 AM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88390592
MARK: MAXIFIX
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Autel Intelligent Technology Corp., Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/18/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On June 17, 2019, the trademark examining attorney and Gregory F. Buhyoff discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Identification of Goods/Recitation of Services
The wording, “Data processing equipment; Downloadable computer application software; Downloadable mobile applications; Operating system programs; Computer software for controlling self-service terminal; Computer software for authorizing access to databases; Internal communication devices for diagnostics and troubleshooting; Navigation apparatus for vehicles (on board computers); Sound transmission device for diagnostics and troubleshooting; Photographic equipment appliance boxes; Measuring devices, electric; Measuring instruments; Simulators for drive or control of vehicles; Alarms; Software for diagnostics and troubleshooting; Engines diagnostics apparatus; Testing apparatus for diagnostic purpose (other than medical); Video recording apparatus for vehicles,” in International Class 9, and “Radio broadcast; Providing user accesses to the Internet (services providers); Provide database access service; Providing online forums; Virtual chat room service based on text message transmission; Wireless digital information delivery service relating to diagnostics and troubleshooting,” in International Class 38, in the identification of goods/recitation of services is unacceptable as indefinite, as indicated below. The applicant must amend the identification/recitation to specify the commercial name of the goods/services and/or the industry or field in which the goods are used/services performed, as indicated below in the suggested identification/recitation. If there is no common commercial name for the product/services, the applicant must describe the product/services and its intended uses/functions. TMEP section 804.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 804.04.
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.
The applicant may adopt the following identification of goods/recitation of services, if accurate:
“Data processors; Downloadable computer software for [specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use]; Downloadable mobile applications for [indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use]; Interactive touch screen terminals; Downloadable operating system programs; Downloadable computer software for controlling self-service terminals; Central processing units for processing information, data, sound and images; Downloadable computer software for authorizing access to databases; Integrated computerized system for the collection, transmission, storage and sharing of data and information related to electronic communication analyses for troubleshooting purposes; Navigation apparatus for vehicles in the nature of on-board computers; Emergency signal transmitters; Sound alarms that connect to a computer communications network for diagnostics and troubleshooting purposes; Cases adapted for photographic equipment; Electronic test and measurement devices for use in the fields of networks and telecommunications, namely, instrumentation used to test and certify new and existing data and voice communication cable and coaxial cable; Scientific measuring instruments, namely, conductivity meters; Computerized vehicle engine analyzers; Simulators for driving or control of vehicles; LCD monitors; Acoustic alarms; Downloadable computer software for diagnostics and troubleshooting of [specify what is being analyzed]; Automatic indicators of low pressure in vehicle tires; Engine diagnostics apparatus, namely, [specify apparatus by its common commercial name]; Machines for testing [indicate goods being tested, e.g., asphalt, textiles, plastics, etc.], not for medical purposes; optical code readers; car video recorders; Video recorders and video reproducing apparatus for vehicles; Tyre-pressure measures,” in International Class 9; and/or
“Radio broadcasting; Computer aided transmission of information and images; Satellite transmission; Providing multiple-user access to the Internet; Providing access to databases; Transmission of digital files; Providing telecommunications connections to a global computer network; Providing Internet chat rooms; Providing on-line forums for transmission of messages among computer users; Providing virtual chat rooms established via text messaging; Network transmission of sounds, images, signals and data; Information transmission services via wireless digital networks for diagnostics and troubleshooting purposes,” in International Class 38.
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.
/Alec Powers/
Trademark Examining Attorney
US Trademark Law Office 101
Ph: 571-272-9309
Fax: 571-273-9309
alexander.powers@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.