Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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:  August 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

 

• Identification of Goods clarification required
• Partial abandonment advisory

 

 

No Conflicting Marks Found

 

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 clarification

 

The identification of goods is indefinite and must be clarified as noted in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In particular, under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Thus, the applicant must indicate whether the software is downloadable or recorded (or both) for proper classification in Class 9. Other identifications require further clarification as noted in the ID Manual and/or because the wording is unclear to identify the nature of the goods.

 

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.

 

Applicant may adopt the following wording, if accurate: 

 

Class 9:

 

Control apparatus for audio signals; {indicate downloadable or recorded} noise cancellation software; Ear plugs for divers; Noise cancelling headphones; Batteries for use in hearing aids; {indicate downloadable or recorded} application software for wireless devices; Headphone-microphone combinations; {indicate downloadable or recorded} application software for mobile phones for {indicate the function of the software and, if software is content- or field-specific, the content or field of use}; protective cases for headphones; Safety, security, protection and signalling devices, namely {specify the devices}; {indicate downloadable or recorded} application software for cloud computing services for {specify the function of the software used in cloud computing, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform, etc.}; Noise cancelling apparatus, namely {specify the apparatus, e.g. headphones}; {indicate downloadable or recorded} application software for social networking services via internet; Digital audio players; Noise filters, namely {specify the goods, e.g., sound filters made of cloth, for radio apparatus}; Headphone amplifiers; Adapters for connecting telephones to hearing aids; Noise suppression apparatus; {indicate downloadable or recorded} computer programs for {indicate the function of the software and, if software is content- or field-specific, the content or field of use}; Acoustic transformers; Wireless headphones; Ear phones; Personal headphones for sound transmitting apparatuses; Audio noise reducers, namely {specify the goods, e.g., sound dampeners for electronic audio equipment; Signalling apparatus and instruments, namely {specify the goods}; In-ear headphones; Instruments for the reduction of noise in systems for recording audio signals, namely {specify the goods, e.g., sound sensors, digital sound processors}

 

Class 10:

 

Medical apparatus for use in testing hearing disorders; Medical instruments for use in relation to hearing for {indicate the use/purpose of the instrument}; Noise protection in the form of deformable ear plugs for noise reduction; Hearing protection devices, namely {identify goods, e.g., hearing protectors without the ability to reproduce or transmit sound}; Acoustic amplifiers in the nature of hearing aids for partially deaf persons; Ear plugs for sleeping; Hearing aids; Digital hearing aids; Sound excluding instruments for medical use, namely {identify the Class 10 goods}; Ear thermometers; Hearing protectors without the ability to reproduce or transmit sound; Electrically operated hearing aids; Ear trumpets; Earmoulds being parts of hearing aids; Ear plugs for medical purposes; Ear inserts for medical use, namely {specify the goods}; Analog hearing aids; Ear adaptors specially adapted for hearing aids; Hearing aids for the deaf; medical apparatus for use in treating hearing disorders; Hearing apparatus for the deaf, namely {specify the goods}; Programmable hearing aids; Ear plugs for {specify use, e.g., sleeping, swimming, etc.}; medical apparatus for use in alleviating hearing disorders; Medical hearing instruments; Ear plugs for protection against noise

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Partial abandonment advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Classes 9 and 10 will be DELETED from the application: 

 

Cl 9:  Noise cancellation software; Application software for wireless devices; Application software for mobile phones; Cases for headphones; Safety, security, protection and signalling devices; Application software for cloud computing services; Noise cancelling apparatus; Application software for social networking services via internet; Noise filters; Noise suppression apparatus; Computer programs; Audio noise reducers; Signalling apparatus and instruments; Instruments for the reduction of noise in systems for recording audio signals.

 

Cl 10:  Medical instruments for use in relation to hearing; Noise protection means in the form of deformable ear plugs; Hearing protection devices; Acoustic amplifiers for partially deaf persons; Sound excluding instruments for medical use; Ear inserts for medical use; Ear adaptors for hearing aids; Apparatus for use in treating hearing disorders; Hearing apparatus for the deaf; Ear plugs; Apparatus for use in alleviating hearing disorders

 

The application will then proceed with the following goods in International Classes 9 and 10 only: 

 

Cl 9: Control apparatus for audio signals; Ear plugs for divers; Noise cancelling headphones; Batteries for use in hearing aids; Headphone-microphone combinations; Digital audio players; Headphone amplifiers; Adapters for connecting telephones to hearing aids; Acoustic transformers; Wireless headphones; Ear phones; Personal headphones for sound transmitting apparatuses; In-ear headphones

 

Cl 10: Apparatus for use in testing hearing disorders; Ear plugs for sleeping; Hearing aids; Digital hearing aids; Ear thermometers; Hearing protectors without the ability to reproduce or transmit sound; Electrically operated hearing aids; Ear trumpets; Earmoulds being parts of hearing aids; Ear plugs for medical purposes; Analog hearing aids; Hearing aids for the deaf; Programmable hearing aids; Medical hearing instruments; Ear plugs for protection against noise

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

General Response Information

 

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.  

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Andrea P. Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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 August 27, 2019 for

U.S. Trademark Application Serial No. 88460397

 

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. 

 

 

/Andrea P. Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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 August 27, 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.”