Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  8/9/2019

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’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).

 

IDENTIFICATION OF GOODS MUST BE AMENDED

 

The wording “WIFI” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No(s). 2525795. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace such wording with the following, if appropriate: 

 

Dashboard cameras, cameras, camcorders, wireless network cameras, wireless cameras, car cameras, mp3 players, microphones, headphones, wireless headphones, wireless network extenders, security cameras

 

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.

 

REQUEST FOR INFORMATION

 

Applicant must provide additional information and documentation about his or her domicile.  To permit proper examination of the application as to whether the address provided in the application is applicant’s domicile and applicant is subject to the requirement under 37 C.F.R. §2.11(a) to be represented by a U.S.-licensed attorney, applicant must provide the additional information and documentation below.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; TMEP §814. 

 

An applicant’s domicile address is an application requirement and also dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent them at the USPTO.  See 37 C.F.R. §§2.11(a), 2.22(a)(1), 2.32(a)(2), 2.189.  An applicant whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a).  Foreign citizens must comply with U.S. visa immigration laws to claim the United States as their permanent legal residence. 

 

In this case, it is unclear from the application record whether the U.S. street address provided is actually the address of applicant’s permanent legal residence.  Applicant must therefore provide all of the following:

 

(1)       An explanation of the basis for claiming that the United States address provided in the “Owner Information” section of the application is applicant’s lawful permanent residence (if an individual) or business headquarters (if a juristic entity).  For example, if applicant is an individual who is a foreign citizen, applicant may state that he or she has a valid form I-551 that admits applicant to live in the United States as a permanent resident, and provide the dates of issuance and expiration of the I-551.  A juristic entity may state that it is an entity actively registered in a specific U.S. state or territory at the designated address, as established by documentation submitted from the relevant office or agent of that state or territory.

 

(2)       Documentation showing that the address in the application is applicant’s address of residence (for an individual) or business headquarters (for a juristic entity), such as:

(i) a valid signed rental, lease, or mortgage agreement dated within one year of the application filing date;

(ii) a valid homeowner’s, renter’s, or motor vehicle insurance policy dated within one year of the application filing date;

(iii) a computer generated bill issued by a utility company dated within 60 days of the application filing date; or

(iv) change-of-address confirmation from the U.S. Postal Service showing applicant’s prior and current address (Form CNL107). 

 

Submitted documentation must show the name and address of the residence or business and the date of the document but should redact other personal and financial information. 

 

Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants & Registrants, Examination Guide 4-19, at I.A.3 (Aug. 2019); see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

If the U.S. street address of record is not applicant’s correct or current domicile address, applicant must provide his or her correct and current permanent legal place of residence address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.  If applicant provides a different U.S. street address as his or her domicile address, applicant must provide the same information and documentation requested above.

 

Failure to comply with this request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Applicant also is advised that providing false statements or documentation concerning applicant’s domicile address or in response to this request for information is deemed submitting a paper for an improper purpose in violation of 37 C.F.R. §11.18(b), and subject to the sanctions and actions provided in 37 C.F.R. §11.18(c).  See 37 C.F.R. §2.11(e).

 

To provide the explanatory statement and documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) provide in the text box a statement explaining the basis for applicant’s claim that the listed address is applicant’s physical domicile address; and (2) click the button below the text box to attach evidence showing the U.S. address is applicant’s domicile. 

 

If the listed address is not applicant’s correct or current domicile, provide applicant’s physical domicile address by opening the correct TEAS response form, answering “yes” to wizard question #5, and providing applicant’s physical domicile address on the “Owner Information” page.  If applicant provides a different U.S. street address, applicant will need to follow the directions for providing the additional information and documentation requested above.

 

US ATTORNEY REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney because it is not clear that applicant’s current address supports domicile in the United States.  Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See 37 C.F.R. §§2.2(o), 2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant can establish domicile in the United States, this requirement may be withdrawn.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

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 see response forms at:  http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

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.  

 

 

    

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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 8/9/2019 for

U.S. Trademark Application Serial No. 88440104

 

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. 

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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 8/9/2019, 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.”