United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88424705
Mark: RED DRAGON
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Correspondence Address: |
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Applicant: TUL CORPORATION
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Reference/Docket No. 2846/1670TUS
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
· Prior-Filed Applications
· Section 2d Refusal
· Specimen Refusal-Class 35
· Information About Specimen Required
· Identification of Goods and Services
The filing dates of pending U.S. Application Serial Nos. 88122256 and 88359889precede 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
Applicant’s mark “RED DRAGON” with a design is for “Computers; computer hardware; computer software, recorded, for data processing and memory devices, namely, computer software for processing, data storage and input/output accelerating; data processing apparatus; computer memory devices; Computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; computer programs, recorded, for data processing and memory devices, namely, computer programs for processing, data storage and input/output accelerating; computer peripheral devices; Downloadable computer programs, for data processing and memory devices, namely, downloadable computer programs for processing, data storage and input/output accelerating; Downloadable computer software applications for data processing and memory devices, namely, downloadable computer software for processing, data storage and input/output accelerating; acoustic and electric couplers; Computer central processing units; Optical character readers; interfaces for computers; integrated circuit cardssmart cards / smart cardsintegrated circuit cards; memory cards for video game machines; graphics card; Electronic chips for the manufacture of integrated circuits; integrated circuits” in International Class 9, and for “business management assistance; commercial or industrial management assistance; commercial administration of the licensing of the goods and services of others; import-export agency services; commercial information agency services; dissemination of advertising matter; updating of advertising material; advertising / publicity; advertising agency services /publicity agency services; compiling indexes of information for commercial or advertising purposes; design of advertising materials; web indexing for commercial or advertising purposes; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; television advertising; presentation of goods on communication media, for retail purposes; marketing; providing business information via a web site; online retail services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card; retail and wholesale services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card” in International Class 35.
Registrant’s mark no. 4403726 “RED DRAGON” is for “Digital image sensors for digital still and motion cameras; digital cinema camera systems and accessories, sold individually or as a unit, comprised of, cameras, camera lenses, digital image sensors, flash memory cards, electronic memories, hard drives for video recorders, video monitors and flat panel display screens, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of photographs and videos” in International Class 9.
Registrant’s mark no. 5166594 “RED DRAGON” is for “Retail store services in the field of Sporting goods, Skateboarding, and Apparel; Retail store services and on-line retail store services featuring Apparel, Clothing, Footwear, Headwear, Shoes, Sporting goods, Snowboards, Skateboards, Skateboard decks, Backpacks, Jewelry, Videos, Shoulder bags, Sports bags, wallets, and a wide variety of Consumer Goods of others” in International Class 35.
Registrant’s mark no. 5344759 “RED DRAGON” is for “Computer cases; Earphones and headphones; Keyboards; Mouse pads; Computer mice” in International Class 9.
Registrant’s mark no. 2254219 “DRAGON ROUGE” is for “advertising agency services, including [distributing advertisements in the form of prospectus or samples and] designing advertisements for others; business management consultation services for commercial undertakings that are in the field of design and advertising” in International Class 35.
Standard of Analysis for 2(d) Refusal
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, registration nos. 5166594 and 4403726 appear in standard characters while applicant’s mark contains a design element, but are otherwise identical. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Furthermore, 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)). Therefore, registration no.’s 5344759 stylized lettering also would not obviate a likelihood of confusion from applicant’s mark.
In this case, the word portion of all but one of the cited marks are identical “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical in wording, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services. Id. Therefore, the marks are confusingly similar.
The registrant’s mark is in French, which is a common, modern language in the United States. See In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the French language is a common, modern language spoken by an appreciable number of consumers in the United States. “DRAGON ROUGE” is therefore confusingly similar to applicant’s mark.
Accordingly, in this case, the mark “RED DRAGON” offers the same commercial impression as the registered “RED DRAGON” and “DRAGON ROUGE” marks. For this reason, the marks are confusingly similar.
Similarity of the Goods and Services
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, registration nos. 4403726 and 87298310 both sell computer related goods in International Class 9. Specifically, registration no. 8729310 is for computer mice, earphones, and keyboards, while registration no. 4403726 is for memory cards, electronic memories, and hard drives. Applicant sells computer hardware and memory devices and memory cards in International Class 9. Therefore, registration no. 4403726 sells identical goods to applicant, “memory cards”, as well as other highly related goods. Furthermore, applicant uses broad wording to describe its computer hardware, which presumably encompasses all goods of the type described, including registration no. 8729310’s narrower computer hardware goods including computer mice, earphones, and keyboards. 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)).
Furthermore, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
In regards to the services in International Class 35 identified by registration no. 5166594, the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii). In this case, registrant’s identification describe its online retail store services as featuring “a wide variety of consumer goods”, which could reasonably include the goods listed in International Class 35 in applicant’s application.
Further, with respect to applicant’s goods in Class 9 as compared to the services in Registration No. 5166594, there are many third party retailers which sell computers, video games, and computer-related goods online. See attached evidence from Best Buy, GameStop, Walmart, OfficeDepot, and Staples. Thus, these goods and services are related because they are provided in the same channels of trade.
In regards to registration no. 2254219, when analyzing an applicant’s and registrant’s services for similarity and relatedness, that determination is based on the description of the services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the services in the application and registration are partially identical in relation to advertising services. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). The additional services being offered by applicant in International Class 35 could reasonably be encompassed within registrant’s identification for International Class 35, and therefore the services are considered related. Specifically, registrant’s “business management consultation services for commercial undertakings that are in the field of design and advertising” could reasonably encompass applicant’s “business management assistance; commercial or industrial management assistance; commercial administration of the licensing of the goods and services of others; import-export agency services” and their aforementioned advertising services. Thus, applicant’s and registrant’s services are related.
To the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for every good or service. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.
In summary, the marks are confusingly similar and the goods are identical or related. Accordingly, purchasers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. Applicant should note the following additional ground for refusal.
SPECIMEN
Registration is refused because the specimen in International Class 35 appears to consist of a digitally altered image or mock-up of the mark on business signage and does not show the applied-for mark in actual use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen shows a webpage with relevant services numbered under the “Terms and Conditions” of the webpage. This does not appear in the format common for terms and conditions pages of websites. See http://www.spotify.com/us/legal/end-user-agreement/ as an example. Therefore, it is unclear from the webpage that the mark is being used in commerce in connection with the listed services.
An image of business signage, such as on a storefront or delivery van, that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is used in the sale, advertising, or rendering of the services, and (3) the services are actually rendered in commerce. See 15 U.S.C. §1127.
Examples of specimens for services include advertising and marketing materials that show the mark used in the actual sale, rendering, or advertising of the services, as well as show a direct association between the mark and the services. See TMEP §1301.04(a), (f)(ii), (h)(iv)(C).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
INFORMATION ABOUT SPECIMEN REQUIRED
A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark). 15 U.S.C. §§1051, 1052, 1127. A specimen shows a mark used in commerce for services only if it displays the mark in the sale, advertising, or rendering of the services, and the services are actually rendered in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s services. See 37 C.F.R. §2.61(b); TMEP §814.
Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:
(1) How are applicant’s services advertised or otherwise offered for sale? If advertised online, identify the websites and provide copies of the webpages showing the services for sale. If advertised in printed newspapers and publications, provide copies of the print advertisements. And if advertised or otherwise offered for sale using another method, provide documentation showing the services for sale using the other method.
(2) Was the specimen created for submission with this application?
(3) Does the specimen show applicant’s storefront and/or delivery vehicle as it currently appears in the rendering of the services?
(4) How is applicant’s mark used in the actual rendering or performing of the services? Provide photos and other documentation showing how applicant’s mark is actually used when the services are being rendered or performed.
(5) Please provide copies of invoices, bills of sale, or other documentation of sales of the services.
See 37 C.F.R. §2.61(b); TMEP §814.
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 is available on applicant’s 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).
IDENTIFICATION OF GOODS AND SERVICES
International Class 9:
The wording “computer software, recorded, for data processing and memory devices, namely, computer software for processing, data storage and input/ouput accelerating” in the identification of goods is indefinite and must be clarified because it is unclear what type of goods these are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, 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.
Applicant may substitute the following wording, if accurate: computer software, recorded, for data processing and memory devices, namely, computer software for {indicate function or purpose, e.g. image, graphics, and text} processing, data storage and accelerating computer functions
Applicant may substitute the following wording, if accurate: computer programs, recorded, for data processing and memory devices, namely, computer programs for processing, data storage and input/output accelerating, for use with video and computer games; Downloadable computer programs, for data processing and memory devices, namely, downloadable computer programs for processing, data storage and accelerating computer functions for use with video and computer games; Downloadable computer software applications for data processing and memory devices, namely, downloadable computer software for processing, data storage and accelerating computer functions for use with video and computer games
Moreover the wording “acoustic and electric couplers” and “integrated circuit cards [smart cards] / smart cards [integrated circuit cards]” is indefinite because it is unclear what these goods are. Applicant must also correct the punctuation in the identification to clarify the individual items in the list of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may adopt the following wording, if accurate: acoustic couplers and couplers for electronics; integrated circuit cards; blank smart cards
International Class 35:
Like the suggestion for International Class 9, applicant must correct the punctuation in the identification to clarify the individual items in the list of services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).
The wording “commercial or industrial management assistance” “web indexing for commercial or advertising purposes”, “presentation of goods on communication media, for retail purposes”, “providing business information via a web site; online retail services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card”, and “retail and wholesale services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card” is indefinite because it is unclear what particular services applicant is referencing. Again, applicant must use the common commercial or generic name for the services or specify the function or purpose.
Applicant may adopt the following wording, if accurate: commercial and industrial management assistance; compiling indexes of information online for commercial or advertising purposes; Providing television home shopping services in the field of general consumer merchandise; online retail store services featuring computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card; retail store and wholesale services featuring computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card
In summary, applicant may adopt the following wording, if accurate:
International Class 9: Computers; computer hardware; computer software, recorded, for data processing and memory devices, namely, computer software for
{indicate function or purpose, e.g. image, graphics, text, etc} processing, data storage and input/output accelerating computer functions; data
processing apparatus; computer memory devices; Computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications
network; computer programs, recorded, for data processing and memory devices, namely, computer programs for processing, data storage and input/output accelerating computer
functions for use with video and computer games; computer peripheral devices; Downloadable computer programs, for data processing and memory devices, namely, downloadable
computer programs for processing, data storage and input/output accelerating computer functions for use with video and computer games; Downloadable computer software
applications for data processing and memory devices, namely, downloadable computer software for processing, data storage and input/output accelerating for use with video and
computer games; acoustic couplers; and electric couplers for electronics; Computer central processing units; Optical character readers;
interfaces for computers; integrated circuit cards; blank smart cards integrated circuit cards [smart cards] / smart cards [integrated circuit cards]; memory cards for
video game machines; graphics card; Electronic chips for the manufacture of integrated circuits; integrated circuits
International Class 35: business management assistance; commercial or and industrial management assistance; commercial
administration of the licensing of the goods and services of others; import-export agency services; commercial information agency services; dissemination of advertising matter; updating of
advertising material; advertising / and publicity services; advertising agency services ; /publicity agency services;
compiling indexes of information for commercial or advertising purposes; design of advertising materials; web indexing compiling indexes of information online for
commercial or advertising purposes; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; television advertising; presentation of goods on
communication media, for retail purposes Providing television home shopping services in the field of general consumer merchandise; marketing services;
providing business information via a web site; online retail store services for featuring computers, computer hardware, computer software,
telecommunication equipment, electronic materials, computer peripherals, and graphics card; retail store and wholesale services for featuring
computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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 GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
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 nonfinal Office action
Sasha Boshart Rios
/Sasha Boshart Rios/
Trademark Examining Attorney
Law Office 125
P: (571)272-2616
Sasha.Boshart@USPTO.GOV
RESPONSE GUIDANCE
