To: | Vinpower, Inc. (jflee@ipfirm.us) |
Subject: | U.S. Trademark Application Serial No. 88503575 - OPTICAL QUANTUM - 62643.41 |
Sent: | September 07, 2019 10:58:59 AM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88503575
Mark: OPTICAL QUANTUM
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Correspondence Address: 17800 CASTLETON STREET, SUITE 560
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Applicant: Vinpower, Inc.
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Reference/Docket No. 62643.41
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 07, 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).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “OPTICAL” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s 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).
The identification of goods indicates that applicant’s goods include “optical disc drives” “optical magnetic disc drives,” “computer program for writing data in optical discs, namely, recordable cds, dvds, and blank optical and magneto-optical discs, primarily for testing and analyzing media quality, as well as in flash media, such as USB, SD, CF, and hard drives including HDD and SSD.” The wording “OPTICAL” as used in the applied-for mark thus merely describes features and characteristics of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “OPTICAL” 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.
REQUEST FOR INFORMATION: EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
The identification of goods is indefinite and must be clarified to further explain the nature of the goods as set forth in greater detail in the suggested amendment below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In particular, the identification for software in International Class 009 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
International Class 009: Optical disc drives; optical magnetic disc drives; magnetic disc drives; solid state drives; {specify downloadable or recorded} ___ computer software for burning optical media and copying flash content onto flash storage media, and computer hard drives; {specify downloadable or recorded} ___ computer program for writing data in optical discs, namely, recordable cds, dvds, and blank optical and magneto-optical discs, primarily for testing and analyzing media quality, as well as in flash media, such as USB, SD, CF, and hard drives including HDD and SSD; Digital storage media duplicator controllers, in the nature of computer hardware and computer peripheral devices for duplication towers, some of which require user intervention, or automated loaders, some of which do not require user intervention, namely, digital media burners, namely, CD, DVD, BD burners, and devices for the duplication of all types of digital storage media, namely, blank optical discs, blank hard drives, flash drives, and flash memory cards
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.
MARK DESCRIPTION AND COLOR CLAIM REQUIRE AMENDMENT
Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not list all of the colors appearing in the drawing in the color claim or mark description. Therefore, applicant must provide an amended color claim. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.
The following color claim is suggested, if accurate: “The colors white, blue, and gray are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate: The mark consists of blue stylized wording "OPTICAL QUANTUM" where the "O" is an image of a blue disc with four white triangles depicting reflective surface. A blue curved line stretches from the letter "P" to "M". A gray cast shadow appears beneath all features of the mark.
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
/Rachel E. Desjardins/
Examining Attorney
Trademark Law Office 123
Phone: (571) 270-0104
Email: Rachel.Desjardins@USPTO.gov
(Informal communications only – Do not respond to Office action via email.)
RESPONSE GUIDANCE