To: | Horizon Hobby, LLC (trademarks@horizonhobby.com) |
Subject: | U.S. Trademark Application Serial No. 88468247 - SMART TECHNOLOGY - N/A |
Sent: | September 04, 2019 01:28:24 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88468247
Mark: SMART TECHNOLOGY
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Correspondence Address: |
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Applicant: Horizon Hobby, LLC
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Reference/Docket No. N/A
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: September 04, 2019
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.
Search Results
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).
“TM” Not Part Of Mark-Drawing Unacceptable-Substitute Required
Applicant must submit a new drawing with the “TM” symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable. See 37 C.F.R. §2.72; TMEP §807.14(a). Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about deleting matter from the drawing, see the Drawing webpage.
Color Drawing No Color Claim
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: The mark consists of [specify].
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors [specify] are claimed as a feature of the mark.”
Description: “The mark consists of the following: a [specify color] [specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a red and blue bird on a green mountain].”
See TMEP §807.07(b).
Disclaimer Required
In this case, applicant must disclaim the wording “Smart Technology” in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a function, feature, purpose, or use of applicant’s goods as shown on the specimens of use where the wording “smart technology” is used to describe and identify features of the goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “Smart Technology” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Identification Unacceptable In Part-Indefinite Wording-Amendment Required
The wording “ESCs, batteries and accessories therefor, namely, chargers, power supplies, power plugs and electrical conductors for model vehicles” in the identification of goods is indefinite as to the letters “ESC’s” and must be clarified because the common commercial or generic name of the goods must be further specified, as well as which gods the accessories apply to. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to further specify the common commercial or generic name of the goods. See TMEP §1402.01. For example, the wording “ESCs, namely electronic speed controls, batteries and accessories for ESCs, namely electronic speed controls and batteries therefor namely, chargers, power supplies, power plugs and electrical conductors for model vehicles” is acceptable in International Class 9 and may be adopted, if accurate.
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.
How to respond. Click to file a response to this nonfinal Office action
Ferraiuolo, Dominic
/DominicJFerraiuolo/
Examining Attorney, U.S.P.T.O.
Law Office 102
tel: 571-272-9156
fax: 571-273-9102
email: dominic.ferraiuolo@uspto.gov
RESPONSE GUIDANCE