Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL 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:  October 31, 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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

NO CONFLICTING 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).

 

TRANSLATION OF THE MARK

 

Applicant’s transliteration of the mark has been garbled and currently reads “The non-Latin characters in the mark transliterate to Hán w? jì and this means Cambrian in English.”  Because the question mark appears to be an incorrect character, applicant must clarify the transliteration of the mark.  TMEP §809.03.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods is indefinite and must be clarified.  “Monitors” is listed twice; the redundant listing must be deleted.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

“Calculating machines; Data processing apparatus; Computer memory devices; Computers; recorded computer programs for use in [specify the function of the programs]; Computer operating programs, recorded; Computer peripheral devices; recorded computer software for use in [specify the function of the software]; data processing equipment, namely, couplers; Interfaces for computers; Microprocessors; computer monitors; computer central processing units; [specify, e.g., “optical,” “electronic book”] readers; Integrated circuit cards; blank smart cards; downloadable computer programs for use in [specify the function of the programs]; Downloadable computer application software for [specify items, e.g., mobile phones, portable media players, handheld computers], namely, software for [specify the function of the programs]; Laptop computers; Computer hardware; Bar code readers; Identity cards, magnetic; Scanners; Video game cartridges; downloadable electronic publications in the nature of [indicate specific nature of publication] in the field of [indicate subject matter of publication]; recorded computer game software; recorded and downloadable computer software platforms for [indicate purpose of platforms, e.g., application development, web hosting, database management, etc.]; wearable computers in the nature of [specify, e.g., “smartwatches,” “smartglasses”]; Humanoid robots with artificial intelligence; Security token hardware; Electronic tags for goods; Quantity indicators, namely, [specify, e.g., “level indicators”]; fingerprint [specify, e.g., “scanners”, “imagers”]; biometric identification apparatus in the nature of a face recognition device; Punched card machines for offices; Precision balances; Weighing apparatus and instruments; Weighing machines; instruments for measuring length; luminous light-emitting electronic pointers; luminous and mechanical [specify, e.g., “railway,” “traffic,”] signals; Smartphones; Wearable activity trackers; Electro-dynamic apparatus for the remote control of signals; electric Navigational instruments; electronic optical communication instruments and components, namely, [specify, e.g., “digital transmitters,” “optical receivers”]; Internet communication equipment, namely, [specify, e.g., “LAN [local area network] computer cards for connecting portable computer devices to computer networks”]; Loudspeakers; Headphones; Portable media players; Virtual reality headsets; Security surveillance robots; Projection screens; Cameras; Surveying instruments; Measuring apparatus, namely, [specify, e.g., “rulers”]; Biochips for research or scientific purposes; Laboratory robots; components for electrical mains in the nature of [specify components, e.g., electric wires, connectors, circuit breakers, cables, etc.]; Coils, electric; electric control panels; Remote controls for [indicate specific devices, e.g. radios, televisions, stereos]; Integrated circuits; Semi-conductors; Printed circuits; computer chips; Printed circuit boards; Electronic chips for the manufacture of integrated circuits; Electric installations for the remote control of industrial operations; Ionization apparatus for scientific or laboratory use; Fire extinguishing apparatus; Radiological apparatus for industrial purposes; Protection devices for personal use against accidents, namely, [specify, e.g., “Eye covers for protective purposes”]; Life saving apparatus and equipment, namely, [specify, e.g., “swim floats for safety purposes”]; electrical anti-theft installations for vehicles, electric; 3D spectacles; Batteries, electric; X-ray photographs, other than for medical purposes; visual recordings and audiovisual recordings featuring animated cartoons; portable remote-controlled car arrester, namely, [specify, e.g., “electronic key fobs being remote control apparatus”],” in International Class 9.

 

“Technological research in the field of [indicate field or subject matter, e.g., computer hardware systems, renewable energy resources, etc.]; Conducting technical project studies, namely, [specify, e.g., “conducting scientific feasibility studies”]; Scientific research; Research and development of new products for others; Telecommunications technology consultancy; Geological research; Chemical research; Biological research; Material testing; Vehicle roadworthiness testing; Industrial design; Packaging design; Architectural services; Interior design; Dress designing; Computer programming; Software as a service (SAAS) services featuring software for [specify the function of the programs]; Digitization of documents; Outsource service providers in the field of information technology; Computer technology consultancy; Computer software design; Updating of computer software; Consultancy in the design and development of computer hardware; Computer software consultancy; Hosting Internet sites for others; Information technology [IT] consulting services; Electronic data storage; Providing information on computer technology and programming via a web site; Cloud computing; Conversion of computer programs and data, other than physical conversion; Rental of web servers; Recovery of computer data; Creating and maintaining web sites for others; Installation of computer software; Computer system design; Computer rental; Monitoring of computer systems by remote access to ensure proper functioning; Maintenance of computer software; Duplication of computer programs; Computer system analysis; Platform as a service (PAAS) featuring computer software platforms for [specify the function of the programs]; Data encryption services; Off-site data backup; Computer security consultancy; Web site design consultancy; Server hosting; Rental of computer software; Conversion of data or documents from physical to electronic media; Computer virus protection services; Providing search engines for the internet; Data decryption services; Development of computer hardware for computer games; Computer programming of video games; design and development of computer hardware and software; Data migration service; Computer network configuration services; Computer software maintenance and upgrading; Hosting websites of others; Computer software installation and maintenance; Animation design for others; Cartography services; Assessment of intangible assets, namely, [specify, e.g., “quality control for others”],” in International Class 42.

 

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 services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

SECTION 44(d) SOLE BASIS WITH INTENT TO PERFECT SECTION 44(e)

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

QUESTIONS

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

 

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 October 31, 2019 for

U.S. Trademark Application Serial No. 88520179

 

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. 

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

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 October 31, 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.”