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:  September 23, 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, 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues that Applicant Must Address

           

• Refusal under Section 2(d) – Likelihood of Confusion
• Two Prior Pending Applications
• Identification of Goods and Services Indefinite-Amendments Required
• Attorney Bar Information Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4681028, 4681027, 4040008, 3924375 and 2930681.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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). 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

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).

 

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)).

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

The applicant’s mark is L3HARRIS (and Design).

 

The mark in Reg. No. 4040008 is L3 (within a circle design.)

 

The mark in Reg. No. 4681028 is L3 (standard character)

 

The mark in Reg. No. 4681027 is L3 (within a circle design.)

 

The mark in Reg. No. 3924375 is L3 (within a circle design.)

 

The mark in Reg. No. 2930681 is L3 (standard character)

 

The applicant’s mark is confusingly similar to the marks in the cited registrations because the marks are highly similar in sound, appearance, connotation, and commercial impression.  Specifically, the marks share “L3”, and this term would be pronounced and displayed identically, thereby creating similarities in sound and appearance.

 

Even though applicant’s mark contains the additional wording “HARRIS”, this wording does not obviate the similarities between the marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  SeeIn re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this case, the dominant element of all the marks is “L3” which serves as the source identifier for all the marks. “HARRIS” would be perceived by consumers as a variant line of goods and services under the shared “L3” source. Therefore, this additional wording does not obviate the similarities between the marks.

 

Therefore, applicant’s mark is likely to cause confusion with registrant’s marks because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar and confusion is likely.

 

Relatedness of the Goods/Services

 

The compared goods/services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or 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 goods and/or services in the application and registration(s) are identical.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or 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)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

Applicant has identified various goods and services in International Classes 09, 16, 18, 20, 25, 35, 37, 38, 42, and 45.

 

U.S. Registration No. 4681028 identifies “Notepads, adhesive notepads, pens, ballpoint pens, highlighter pens, notebooks, spiral bound notebooks, paper notebooks, leather writing pad covers, writing pads, paper clips, document markers” in Class 16, “tote bags; duffel bags; messenger bags; sport bags; and zip pouch drawstring sling backpacks; leather key chains” in Class 18, “Coffee mugs; plastic water bottles sold empty; aluminum water bottles sold empty; plastic key chains” in Class 20, and “Clothing for men and women, namely, shirts, collared shirts, t- shirts, jackets, wind vests, and waterproof jackets” in International Class 25.

 

U.S. Registration No. 4681027 identifies “Notepads, adhesive notepads, pens, ballpoint pens, highlighter pens, notebooks, spiral bound notebooks, paper notebooks, leather writing pad covers, writing pads, paper clips, document markers” in Class 16, “tote bags; duffel bags; messenger bags; sport bags; and zip pouch drawstring sling backpacks; leather key chains” in Class 18, “Coffee mugs; plastic water bottles sold empty; aluminum water bottles sold empty; plastic key chains” in Class 20, and “Clothing for men and women, namely, shirts, collared shirts, t- shirts, jackets, wind vests, and waterproof jackets” in International Class 25.

 

U.S. Registration No. 4040008 identifies a variety of electronic and technical equipment in International Class 09.

 

U.S. Registration No. 3924375 for the mark “L3” identifies “Logistics management advice and consultation in the field of telecommunications; Business consultation and assistance in the operation of telecommunication systems and networks for others; Business consultation and assistance in the field of telecommunications network management, namely, the operation and administration of telecommunication networks and communication links for others” in Class 35, “Technical consultation in the field of building construction of fixed site earth-based facilities; Technical consultation and assistance in the field of construction, repair and maintenance of submarines and ships; Technical consultation concerning the installation, repair and maintenance of mobile and fixed site earth-based facilities, satellites and related information systems, namely, information security, communications, microwave products and telemetry and instrumentation; Technical consultation and assistance in the field of deployment of computer hardware equipment and systems” in Class 37, “Technical consultation in the field of satellite communications and communications by related communication information systems, namely, communications via satellite transmission, microwave products and telemetry and instrumentation; Consultation and technical assistance in the fields of secure communications and telemetry” in Class 38, “Technical consultation and assistance in the field of avionics; Information technology consultation in the fields of submarines and ships, mobile and fixed site earth-based facilities, satellites and related information systems, namely, information security, communications, microwave products and telemetry and instrumentation; Designing computer systems for software integration, maintenance and user-information services, operation support systems for software integration, maintenance and planning support services and provisioning, and provisioning control support services for satellite control networks, real-time defense communications systems, and real-time defense intelligence collection systems; Designing computer systems for engineering support for satellite launches, deployed communication systems and deployed intelligence collection systems; Consultation and technical assistance in the fields of customization of computer hardware and software products; Consultation and assistance with computer program management services, computer site management services, and deployment and management of wireless communications networks of others and communications link management services; Technical support services, namely, troubleshooting in the nature of diagnosing and testing computer hardware and software problems; Providing an interactive web site that enables users to enter, access, monitor and generate designed strategic and tactical signal intelligence information reports” in Class 42, and “Consultation and technical assistance in the fields of information security and intelligence security services for secure and non-secure voice, data, and video communications, user authorization, recognition and message encryption” in International Class 45.

 

U.S. Registration No. 2930681 for the mark L3 identifies “Commercial real estate brokerage services” in International Class 36.  

 

In the present case, applicant’s goods and services are related to registrant’s goods and services because the majority of the wording in the application and the various registrations held by registrant are identical. Therefore, the applicant and registrant are providing many identical goods and services. Therefore, these goods and services are closely related.

 

Conclusion

 

Thus, the applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Prior Pending Applications

 

The filing dates of pending U.S. Application Serial Nos. 86766331 and 86949263 precede 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.

 

Identification of Goods/Services

 

The identification of goods/services is unacceptable as indefinite and must be clarified further.  The applicant must clarify the identification of goods/services by specifying the type of goods and services being provided with greater accuracy.  Please see the problematic descriptions and suggested amendments below.  See TMEP §1402.01.

 

For purposes of clarification, please see additional information:

 

Class 09

 

All instances of computer software must be clarified as either “downloadable” or “recorded” in

Class 09.

 

The wording “frequency filters” is indefinite and must be amended. Applicant must specify the type of frequency filter.

 

The wording “electronic sensors that provide in real time the ability to collect electronic data and information, namely, sense the external electromagnetic spectrum and convert that received energy into a digital representation of the energy; process electronic data and information, namely, filter the digital representation of the energy and translate it into a visual or audio representation of the information; analyze electronic data and information, namely, compare georeferenced information, detect any changes, and display changes for visual confirmation; store electronic data and information, namely, transfer data and information to digital storage; and disseminate electronic data and information, namely, create information based on electronic packets that can be sent on any selected transfer media to other remote locations” is unclear. This appears to be all one identification entry, but the use of semicolons makes it appear as though different goods are being identified. Applicant must clarify.

 

The wording “communications terminals which consist of computer hardware that provides for the creation and connection of multimedia communication signals including analog, voice, data, and video and allow signals to be connected to other communications terminals or other network nodes” is indefinite and must be amended. Applicant must clarify the type of communications terminals.

 The wording “avionics systems comprising digital maps, fiber-optic and wire data busses, memory devices, instrumentation for displaying, storing, processing, and retrieving weather, tactical, strategic and secure data, cockpit controls and data displays” is indefinite and must be amended. Applicant must clarify the nature of these goods.

 

The wording “Television signal analysis processors, namely, electronic display panels for displaying signals, signal evaluation terminals primarily comprised of customized signal analysis hardware with integrated displays and software analysis components running on industry standard computers and monitors for evaluating the quality of analog and digital signals, media analysis servers for verifying the quality of digital media content, signal interface modules, handheld signal analyzers, optical signal analyzers, circuit testers for monitoring broadcast signals, and video monitoring tools, namely, software based video monitoring tools, namely, computer software for monitoring and logging the loudness of media content” is unclear. Signal processors are an identifiable good. Therefore, “namely” and listing other goods makes the entry incongruous. Applicant must clarify.

 

The wording “fiber optic signal transports” is indefinite and must be amended. Specifically, the type of transport must be clarified.

 

The wording “NTP” and “UHF/VHF” is unclear and the abbreviation must be clarified.

 

The wording “network management centers primarily comprised of mobile and portable radios and also containing electrical base station controllers, electrical communication controllers and electrical network controllers” is indefinite and must be amended. It is unclear how a “center” is a Class 09 good.

 

The wording “space deployable reflectors for satellite communications” is indefinite and must be amended. Applicant must specify the type of reflectors.

 

The wording “shipboard communication terminals primarily comprised of antennae, pedestals, positioners, modems, up converters, down converters, amplifiers and user interfaces; ground communication terminals primarily comprised of antennae, pedestals, positioners, modems, up converters, down converters, amplifiers and user interfaces” is indefinite. Applicant must clarify the type of positioners and user interfaces.

 

Class 42

 

The wording “Consultation and assistance with computer program management services, computer site management services, and deployment and management of wireless communications networks of others and communications link management services” is indefinite. Applicant must clarify the nature of these Class 42 services.

 

Class 45

 

The wording “Consultation and technical assistance in the fields of information security and intelligence security services for secure and non- secure voice, data, and video communications, user authorization, recognition and message encryption” appears to be misclassified. This wording appears to identify services that are currently classified in Class 42.

 

**Please Note: Suggested Acceptable Descriptions appear in Bold/Italicized font.  Unacceptable descriptions appear Underlined/Bold.

 

Applicant may adopt the following identification(s), if accurate:

 

International Class 09: Computer hardware; aircraft cockpit voice recorders and flight data recorders; flight parameter data recorders and transmitters; semiconductors; radio frequency switches; radar detectors; flight testers, namely, computer hardware and {downloadable or recorded, applicant must clarify} software for performing flight simulation; {downloadable or recorded, applicant must clarify} computer software for aircraft flight simulation; telephonic transmitter; telecommunication network hubs; telecommunication network connectors; telecommunication network receivers; telephonic network interface hardware; telephonic security control hardware; telephonic multimedia control hardware; telephonic switching, routing, and subscriber interface hardware for use in computer and communications networks and systems; {downloadable or recorded, applicant must clarify} computer software for use in command and control in the field of satellite communications; {downloadable or recorded, applicant must clarify} computer software for data mining in the field of strategic and tactical intelligence; {downloadable or recorded, applicant must clarify} computer telemetry software for use in data collection and transmission from satellites, aircraft, missiles, moving surface-based systems and remotely configured fixed site installations; {downloadable or recorded, applicant must clarify} computer software for use in data collection and transmission in medical in x-ray machines, magnetic sensing machines, acoustic sensing machines, chemical tracing machines; {downloadable or recorded, applicant must clarify} computer software for use in control and operation of real-time equipment; {downloadable or recorded, applicant must clarify} computer software for operating and controlling x-ray machines; {downloadable or recorded, applicant must clarify} computer software for operating and controlling magnetic sensing machines; {downloadable or recorded, applicant must clarify} computer software for operating and controlling medical imaging machines; {downloadable or recorded, applicant must clarify} computer software for operating and controlling acoustic sensing machines; {downloadable or recorded, applicant must clarify} computer software for operating and controlling chemical tracing machines; flight navigation controls; flight safety equipment, namely, voice recorders and telemetry systems for use on aircraft; {downloadable or recorded, applicant must clarify} computer software for operating and controlling aircraft maintenance systems on aircraft; {downloadable or recorded, applicant must clarify} computer software for operating and controlling telemetry scanners; intrusion detection systems comprised of {applicant must specify the components of the systems}; {downloadable or recorded, applicant must clarify} computer software for operating and controlling combat scoring systems and pictures, {downloadable or recorded, applicant must clarify} computer software for operating and controlling air traffic handling systems; {downloadable or recorded, applicant must clarify} computer software for operating and controlling monitors, still cameras and video cameras; {downloadable or recorded, applicant must clarify} computer software for operating and controlling radar systems; {downloadable or recorded, applicant must clarify} computer software for use in vehicle status and monitoring systems; {downloadable or recorded, applicant must clarify} computer software for system situational awareness and representation in a communication and data link control system; telecommunications channel amplifiers; frequency filters for use in telecommunications; computer hardware for electronic key information processing, namely, the processing of information related to electronic encryption and other security technologies; radio frequency limiters; harmonic generators; satellite transponders; transponder controllers; secure communications systems consisting of digital processors, modulators, antennas, transmitters, receivers, and encryption hardware and software for secure algorithm processing devices for use with airborne, satellite, ground and sea-based information collection, transmission and analysis; communications systems consisting of high data rate microwave communications links and computer hardware; communications systems consisting of telephonic and high data rate microwave radio components, digital processors, computer hardware, software containing algorithms for use in processing secure communications and software for the secure broadcast and receipt of communications and information or data; on-board satellite equipment providing subsystem capabilities, namely, electronic modules and circuit cards for digital solid-state recording of electronic data, video signal processing, communications signal processing and translation; microwave devices, equipment, products and components, namely, frequency transmitters, frequency converters, frequency synthesizers, frequency modulators, (applicant must specify, e.g. radio) frequency filters, frequency power amplifiers, passive components, mechanical switches, wireless frequency monitors; radio navigation equipment comprised of recording transmission and receiving microwave equipment, namely, microprocessors, electronic displays, digital storage devices, radio transmitters and receivers, providing the following capabilities in the nature of navigation, vehicle command and control, vehicle indications and warning, data and telemetry recording; surveillance equipment and devices, namely, ISR (Intelligence surveillance reconnaissance) subsystems which use computer hardware and software to provide a sampling of the electromagnetic spectrum in prescribed frequencies to extract information content available for analysis, for use in military and civilian aircraft; electronic sensors that provide in real time the ability to collect electronic data and information; electronic sensors that provide in real time the ability to collect electronic data and information, namely, sense the external electromagnetic spectrum and convert that received energy into a digital representation of the energy, process electronic data and information, namely, filter the digital representation of the energy and translate it into a visual or audio representation of the information,  analyze electronic data and information, namely, compare georeferenced information, detect any changes, and display changes for visual confirmation, store electronic data and information, namely, transfer data and information to digital storage, and disseminate electronic data and information, namely, create information based on electronic packets that can be sent on any selected transfer media to other remote locations; electronic computer hardware and {downloadable or recorded, applicant must clarify} software that allow for the collection, monitoring, analysis, storage, and presentation of medical images; computer hardware that allows for the interfacing of analog or digital signals into the existing PSTN (Public Switch Telephone Network) or global Information network and create the ability to take those same signals into a mobile communications system; telephonic computer hardware that allows for creation of a wireless last mile, namely, wireless radio connections between a central source and destination with the telephony and data system having fixed site or mobile operational capability; communications terminals in the nature of {applicant must specify, e.g. telephone terminals, terminals for radiotelephones} which consist of computer hardware that provides for the creation and connection of multimedia communication signals including analog, voice, data, and video and allow signals to be connected to other communications terminals or other network nodes; Radio and television transmission systems comprising transmitters, {applicant must specify the type, e.g. video} monitors, signal mixers, audio and video signal encoders and decoders and editing equipment, namely, signal processors; transmitters and receivers for satellite communications; computer operated network systems comprising computer hardware and software for transmitting data between computers connected in a network and for managing the computers and the transmission of the data on said network; computer information systems comprising computers and software for processing data, word processing and displaying of data; avionics systems in the nature of {computer hardware and recorded or downloadable computer software} comprising digital maps, fiber-optic and wire data busses, memory devices, instrumentation for displaying, storing, processing, and retrieving weather, tactical, strategic and secure data, aircraft cockpit controls and data displays; phased array antennas; global positioning equipment comprising data processors and displays; Computer software and computer hardware for use in air traffic control communications systems for displaying transporting, transmitting voice, data and images, controlling, switching, routing, and receiving air traffic information; computers and {downloadable or recorded, applicant must clarify} computer software for converting images into data, and for analyzing, displaying and printing the data in the field of two and three-dimensional image extraction, manipulation, display, and geographic registration; secure computer operated systems consisting of computer hardware and {downloadable or recorded, applicant must clarify} computer software, and encrypted databases, all used for ensuring and controlling the security and access of a computer network and the information contained therein namely, tracking air traffic and transmitting encrypted messages to pilots data base management, file transfer, and for connecting computers and data bases in a network and for air traffic circulation management; airline management system comprising computers and {downloadable or recorded, applicant must clarify} software for database management and for exchanging aircraft and aircraft operations information; Television signal analysis processors, namely, electronic display panels for displaying signals, signal evaluation terminals primarily comprised of customized signal analysis hardware with integrated displays and software analysis components running on industry standard computers and monitors for evaluating the quality of analog and digital signals, media analysis servers for verifying the quality of digital media content, signal interface modules, handheld signal analyzers, optical signal analyzers, circuit testers for monitoring broadcast signals, and video monitoring tools, namely, software based video monitoring tools, namely, {downloadable or recorded, applicant must clarify} computer software for monitoring and logging the loudness of media content; timing reference generators, namely, time reference signal generators for broadcast system timing signal and test signal generation; computer hardware and {downloadable or recorded, applicant must clarify} computer software for television production, post production and broadcast, namely, demodulators, digital signage, namely, dynamic electronic displays and networking computer servers and {downloadable or recorded, applicant must clarify} computer software for managing and controlling dynamic electronic displays, distribution amplifiers, audio/video editors, namely, computer workstations equipped with {downloadable or recorded, applicant must clarify} computer software for editing audio and video program material, computer hardware and {downloadable or recorded, applicant must clarify} computer software sold as a unit for generating characters and graphics, {downloadable or recorded, applicant must clarify} computer software for generating visual effects, computer hardware and {downloadable or recorded, applicant must clarify} computer software sold as a unit for generating and inserting on-air branding, emergency alert modules, namely, computerized electronic modules and associated {downloadable or recorded, applicant must clarify} computer software for implementing the broadcasting of public emergency alert messages, fiber optic signal transports, electronic master control switchers for audio and video signals, audio and video signal compressors and audio and video signal decompressors, multiplexers and de-multiplexers, multiviewers, broadcast computer network monitoring and {downloadable or recorded, applicant must clarify} control application software, electronic network control panels, audio, video and data receivers and decoders, electronic routing switchers for audio and video signals, video servers, NTP timing modules comprised primarily of computer hardware and {downloadable or recorded, applicant must clarify} computer software for carrying out NTP timing, signal timing clocks, signal transport modules, audio/video sync and timing managers primarily comprised of high precision clock generation circuitry for synchronization of audio with video, {downloadable or recorded, applicant must clarify} computer software for creating and displaying timecode markers, up/down signal frequency converters, signal format cross converters, all for use in the media and entertainment industry; {downloadable or recorded, applicant must clarify} broadcast operations software for advertising, sales, traffic and billing, automation, digital asset management, programming and rights management, namely, {downloadable or recorded, applicant must clarify} computer software for managing, monitoring and automating the buying, selling, scheduling, research, inventory management, production tracking and accounting processes for advertising, and general content for the media and entertainment industry; {downloadable or recorded, applicant must clarify} computer software for controlling and monitoring switching systems for television and radio signals; {downloadable or recorded, applicant must clarify} computer software for managing, monitoring and automating the creation, movement, location, archiving, retrieval and use of digital media assets; {downloadable or recorded, applicant must clarify} business process management and messaging software, for managing and controlling human and automated workflows and multisystem communications for use in the media and entertainment industry; network management centers in the nature of {applicant must specify what is meant by “centers”} primarily comprised of mobile and portable radios and also containing electrical base station controllers, electrical communication controllers and electrical network controllers; mobile and nonmobile two-way communications radios; portable two-way communications radios; radio network gateways comprising computers, computer switches and {downloadable or recorded, applicant must clarify} associated computer software for voice and data communications; Internet protocol-based networks comprising computer hardware and {downloadable or recorded, applicant must clarify} computer software for interoperable communications; telecommunications equipment, namely, trunked radio communication systems for public service and industrial applications comprised of portable communications radios, electrical base station controllers, electrical communication controllers and circuit switches; control equipment for two-way mobile and two-way fixed radios, namely, base station equipment for fixed and mobile networking and communications and cell sites primarily comprised of electronic hardware, {downloadable or recorded, applicant must clarify} computer software, antennae, and base stations, control stations primarily comprised of, radio hardware and {downloadable or recorded, applicant must clarify} associated computer software, desktop control stations primarily comprised of radios, radio hardware and {downloadable or recorded, applicant must clarify} associated computer software, dispatch and console hardware, namely, dispatch consoles and {downloadable or recorded, applicant must clarify} software for carrying out emergency and nonemergency communications and carrying out command and control of public safety personnel and assets, site management computer hardware and {downloadable or recorded, applicant must clarify} software for managing communications radios and base stations, and network monitoring computer hardware and {downloadable or recorded, applicant must clarify} software for monitoring communications radios and base stations; radio data communications systems primarily comprised of mobile communications radios and also containing non-mobile communications radios, portable communications radios, base station controllers, communication controllers, and network controllers; communications radio network gateways comprised primarily of computers, computer switches and {downloadable or recorded, applicant must clarify} associated computer software for providing a gateway between networks; space deployable reflectors for satellite communications; computers and {downloadable or recorded, applicant must clarify} computer software for processing geographic elevation data representing the elevations of locations on the earth to generate, display and print three-dimensional geographically registered representations of those locations; computers and {downloadable or recorded, applicant must clarify} computer software for managing, cataloging and retrieving geospatial imagery, imagery derived products and other intelligence products, through the synchronization of data catalogs across disparate storage locations; computers and {downloadable or recorded, applicant must clarify} computer software for managing, processing, exploiting and disseminating motion imagery intelligence; computers and {downloadable or recorded, applicant must clarify} computer software for managing, processing, exploiting and disseminating flight planning presentations to general aviation pilots and air traffic controllers; networking communications radios; shipboard communication terminals primarily comprised of antennae, pedestals, {applicant must specify what is meant by “positioners”} positioners, modems, up converters, down converters, amplifiers and user interfaces in the nature of {applicant must specify, e.g. touch screens}; ground communication terminals primarily comprised of antennae, pedestals, {applicant must specify what is meant by “positioners”} positioners, modems, up converters, down converters, amplifiers and user interfaces in the nature of {applicant must specify, e.g. touch screens}; computer information systems comprised mainly of computers and {downloadable or recorded, applicant must clarify} computer software for processing data, word processing and displaying of data in the fields of census information systems, healthcare information systems, intelligent electrical power distribution systems, weather reporting and forecasting systems and environmental reporting and forecasting systems; avionics equipment, namely, video signal compressor and decompressors, power supplies, mounting racks specially adapted for mounting and interconnecting electronic apparatus, airborne signal processors for network interoperability and for targeting, of weapons secure network switches, {downloadable or recorded, applicant must clarify} computer software in the nature of networking protocols for facilitating the exchange of electronic messages and data, radio frequency (RF) data links for weapons, very high frequency and ultra high frequency wireless data links, beam former electronics primarily consisting of power amplifiers and also containing low noise amplifiers, phase shifters, time delay units, transmit and receive switches, array dividers, array combiners, frequency up-converters, frequency down-converters, array controllers and array power supplies and control equipment, antenna control units, attitude and heading reference units, transmit/receive control units, antenna position controllers and frequency band select switches; air traffic control communications systems consisting of computer hardware and {downloadable or recorded, applicant must clarify} computer software for displaying, transmitting, controlling, switching, routing, and receiving weather data; two-way radios for communication of voice, data, images and video for use by military and other government agencies; two-way communications radios, namely, voice and data communications radios operable across multiple frequency bands for enabling public safety officials and first responders such as law enforcement agencies, paramedics, firefighters and military personnel to communicate interoperably with one another even though their respective pre-existing communications infrastructures might otherwise be mutually incompatible; trunked radio communication systems for public service and industrial applications, namely, cellular base stations and mobile radio base stations for two-way mobile and fixed communications radios; loudspeakers for mobile two-way communications radios; loudspeakers for non-mobile two-way communications radios; battery chargers for two-way communications radios; Internet protocol-based communication networks comprised primarily of computer hardware and {downloadable or recorded, applicant must clarify} computer software for implementing interoperable communications; cryptographic modules namely, electronic modules with embedded firmware for data encryption; encryption engines; radio frequency wireless communications adapters, namely, network interface cards; {downloadable or recorded, applicant must clarify} software for operating radio frequency wireless network interface cards; {downloadable or recorded, applicant must clarify} communications software for connecting radio frequency wireless network interface cards to a local area communications network; radio network gateways comprised primarily of computers, computer switches and {downloadable or recorded, applicant must clarify} computer software in the field of voice and data communications; {downloadable or recorded, applicant must clarify} computer software for use in the field of air traffic control, namely, for the supervision, maintenance, administration, troubleshooting and configuration of computer software for monitoring the performance of air traffic control systems, mapping definition, uploading software updates and releases, access control, user definition, recovery and diagnostic reporting

 

International Class 16: [ACCEPTABLE AS WRITTEN]

 

International Class 18: [ACCEPTABLE AS WRITTEN]

 

International Class 25: [ACCEPTABLE AS WRITTEN]

 

International Class 35: [ACCEPTABLE AS WRITTEN]

 

International Class 36: [ACCEPTABLE AS WRITTEN]

 

International Class 37: [ACCEPTABLE AS WRITTEN]

 

International Class 38: [ACCEPTABLE AS WRITTEN]

 

International Class 42: Technical consultation and assistance in the field of avionics; Information technology consultation in the fields of submarines and ships, mobile and fixed site earth-based facilities, satellites and related information systems, namely, information security, communications, microwave products and telemetry and instrumentation; Designing computer systems for software integration, maintenance and user-information services, operation support systems for software integration, maintenance and planning support services and provisioning, and provisioning control support services for satellite control networks, real-time defense communications systems, and real time defense intelligence collection systems; Designing computer systems for engineering support for satellite launches, deployed communication systems and deployed intelligence collection systems; Consultation and technical assistance in the fields of customization of computer hardware and software products; Consultation and assistance with {applicant must specify, e.g. computer project management}, namely, computer program management services, computer site management services, and deployment and management of wireless communications networks of others and communications link management services; Technical support services, namely, troubleshooting in the nature of diagnosing and testing computer hardware and software problems; Providing an interactive web site featuring technology that enables users to enter, access, monitor and generate designed strategic and tactical signal intelligence information reports; IT and communication infrastructure data migration services; technical design and deployment of telecommunication networks and computer networks for others; technical support services for migration of datacenter, server and database applications; data migration services; IT software applications management, enterprise services management, namely, management of software applications, management of restricting network, data, maintenance of computer software relating to computer security and prevention of computer risks; computer hardware and software consulting services; technical consulting in the field of telecommunications technology; technical consulting in the field of information technology (IT);

updating and maintenance of computer software, information technology (IT) integration services;

technical support, namely, monitoring of computer networks by remote access; remote computer network technical monitoring for {applicant must specify, e.g. detecting breakdowns} and software maintenance services; remote management of the information technology (IT) systems of others; planning, design and management of information technology (IT) systems; computer hardware and software design; computer network design for others; information assurance services for designing, deploying and operating secure communications systems and information networks, for safeguarding the confidentiality, integrity and availability of information systems and critical business data of others; design of radio, television and digital communications equipment for others; design and integration of telephone systems, communications systems, and information display systems; consultation and technical assistance in the fields of information security and intelligence security services for secure and non-secure voice, data, and video communications, user authorization, recognition and message encryption

 

International Class 45: **Applicant does not have any services that should be classified in International Class 45

 

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).

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Attorney Bar Information and Attestation Required

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

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  

 

 

/Jay K. Flowers/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 112

571.272.8202

jay.flowers@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 23, 2019 for

U.S. Trademark Application Serial No. 88488204

 

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. 

 

 

/Jay K. Flowers/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 112

571.272.8202

jay.flowers@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 23, 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.”