Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  September 24, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 20, 2019.

 

In a previous Office action(s) dated July 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services and disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal and requirement(s) have been satisfied: the likelihood of confusion refusal is withdrawn and the disclaimer has been entered into the record.  See TMEP §§713.02, 714.04. 

 

Portions of the amended identification of goods and services remain unacceptable as indefinite; therefore, the requirement for an acceptable identification of goods/services is maintained and made FINAL.

 

IDENTIFICATION OF GOODS/SERVICES

The services in Class 41 are acceptable.

The wording “recording discs; Downloadable computer software for use as a spreadsheet, word processing;” and “safety, security, protection and signalling devices, namely, signalling whistles personal security alarms” in the identification of goods for International Class 9 is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 See proposed changes in BOLD below.

Applicant may substitute the following wording, if accurate: 

International Class 9:  Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking and supervision, life-saving and teaching apparatus and instruments, namely, cameras, measuring tapes, surveying instruments, and life jackets; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely electric transformers; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, {specify, e.g. blank} recording discs; compact discs, DVDs and other digital recording media in the nature of blank digital video discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, namely, couplers, computers; Downloadable computer software for use as a spreadsheet and for word processing; fire-extinguishing apparatus; downloadable electronically recorded data namely, downloadable musical sound recordings; information technology and audiovisual equipment, namely, computers and audiovisual receivers; magnets, magnetizers and demagnetizers; optical devices, enhancers and correctors, namely, optical readers and filters; safety, security, protection and signalling devices, namely, signalling whistles and personal security alarms; diving equipment, namely, helmets; navigation, global positioning system tracking and location devices, namely, GPS navigation devices; navigation, global positioning system tracking and location devices; downloadable electronic maps; measuring, detecting and monitoring instruments, indicators and controllers, namely, digitizers; educational apparatus and simulators, namely, manipulative blocks used as teaching aids for the visualization of math concepts; educational apparatus and simulators, namely, manipulative blocks used as teaching aids for the visualization of math concepts; computer game programmes downloadable via the Internet; computer game software, namely downloadable from a global computer network; computer game entertainment software, namely downloadable from a global computer network; downloadable software in the nature of a mobile application for use in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; downloadable electronic games; downloadable game software; downloadable interactive multimedia computer game programs; downloadable games software for use on mobile phones, tablets and other electronic mobile devices; downloadable games software downloadable to mobile phones, tablets and other electronic mobile devices; Downloadable computer software for games for use on mobile phones, tablets and other electronic mobile devices; Downloadable computer software for games downloadable to mobile phones, tablets and other electronic mobile devices; Downloadable, computer game applications software; cases and covers for mobile phones, tablets, laptop computers and netbooks, portable media players, cameras and other photographic equipment; laptop bags; lanyards and straps for mobile phones; eyewear; eye glasses; summer eye glasses; sunglasses; mobile phone covers; radios incorporating alarm clocks.

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.

 

 

RESPONSE TO OFFICE ACTION

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  recording discs; Downloadable computer software for use as a spreadsheet, word processing; safety, security, protection and signalling devices, namely, signalling whistles personal security alarms.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following remaining goods and only. 

 

 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Bridgett G. Smith/

Trademark Examining Attorney

USPTO Law Office 115

(571) 272-9482 (P)/(571) 273-9482(F)

bridgett.smith@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 24, 2019 for

U.S. Trademark Application Serial No. 88399970

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Bridgett G. Smith/

Trademark Examining Attorney

USPTO Law Office 115

(571) 272-9482 (P)/(571) 273-9482(F)

bridgett.smith@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 24, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”