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:  October 07, 2019

 

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.

 

SUMMARY OF ISSUES:

• Disclaimer Requirement
• Identification of Goods Requirement
• Multiple-Class Advisory
• Clarify Entity Type

 

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).

 

However, applicant must respond to the following requirements:

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the abbreviation “LLC” because it is not inherently distinctive.  This unregistrable term merely designates the legal character or family business structure of an entity and does not indicate the source of applicant’s goods.  See 15 U.S.C. §§1051-1053, 1127; In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); TMEP §1213.03(d).

 

Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity.  TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40. 

 

The attached evidence from the Merriam-Webster dictionary shows this term is an abbreviation for “Limited Liability Company” and applicant specified its entity type as “limited Liability Company”. Therefore, “LLC” must be disclaimed because it merely describes applicant’s entity type.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “LLC” 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 OF GOODS

 

The wording “software for miscellaneous consumer activities” appearing throughout the identification of goods in International Class 009 is indefinite and too broad and must be clarified to further specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  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).

 

In addition, the wording “protective cases for audio equipment in the nature of …crates, cardboard boxes” is indefinite and may specify goods classified in other International Classes. For example, “cardboard boxes” are goods classified in International Class 016. “Crates”- being wooden or plastic boxes, are goods classified in Class 020. In addition, the entry in the USPTO’s online searchable “U.S. Acceptable Identification of Goods and Services Manual” states as follows: “protective cases for audio equipment in the nature of {indicate specific devices, e.g., speakers, headphones, audio mixers, etc.}”. In this case, applicant was required to identify the type of devices the protective cases are used for, such as speakers, headphones.

 

Further, “crates” and “cardboard boxes” are not materials that Class 009 protective cases are typically constructed of. The Class 009 protective cases must be specially adapted for the Class 009 product, and used permanently or semi-permanently with the product such as a cell phone case or a laptop case.

 

The wording “video cameras cameras” is also indefinite and duplicative. Applicant must clarify if the goods are “video cameras and cameras”.

 

Applicant may adopt the following identification, if accurate: 

 

International Class 009: “3D camera systems, namely, adapters for allowing 3D shooting; Camera filters; Camera hardware systems for IP (Internet protocol) video surveillance; Camera lens adapters; Camera lens mounts; Camera mounts and supports; Camera straps; Camera tripods; Cameras; Speaker enclosures; Speaker microphones; Stereo receivers; Analog cameras; Audio speaker enclosures; Audio speakers; Audio speakers for automobiles; Audio equipment for vehicles, namely, loud speakers for automotive audio systems; Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Bags for cameras and photographic equipment; Bags for underwater camera enclosures; Bags specially adapted for underwater camera housings; Bass speakers; Battery packs for digital cameras, video cameras, stereo components; Body cameras; Body cameras for use by consumers; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, smart phones, tablets, computers; Cases adapted for cameras; Cases for music, audio and related electronic equipment, namely, cases for audio tuners, audio receivers, amplifiers, tape players, compact disc players, MP3 controllers/players, audio mixers, audio speakers in the nature of music studio monitors, microphones, audio speakers, compact discs, audio tapes, portable computers, antennas, phonographic record players, audio recording equipment, and the cables associated with all of the foregoing equipment; Cellular phone usage detection system comprising a camera and a mobile phone signal receiving device; Closed circuit TV systems for security and surveillance, namely, cameras, switchers, monitors, microphones, and recorders; Computer cameras; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; Conversion lenses for cameras; Dashboard cameras; Digital camera accessory in the nature of a digital photo viewer; Digital cameras; Digital video cameras; Disposable cameras; Document cameras; Electric audio playback units with lights and speakers; Environmental enclosures, namely, structures specially adapted to hold and protect cameras from outdoor elements and tampering; Fish-eye conversion lenses for cameras; Fisheye lenses for cameras; Flash guns; Flash lamps; Flashlamps for cameras; Follow focus apparatus for adjusting camera lenses; Game cameras; Gyroscope stabilizers for cameras; Home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for miscellaneous consumer activities, namely, {further specify, i.e., for online ordering, for analyzing consumer activities, etc.}; Home automation hubs comprised of voice-activated speakers, computer hardware, and recorded software for miscellaneous consumer activities, namely, {further specify, i.e., for online ordering, for analyzing consumer activities, etc.}; Home automation hubs using artificial intelligence comprised of voice-activated speakers, computer hardware, and downloadable software for miscellaneous consumer activities, namely, {further specify, i.e., for home shopping, for analyzing consumer activities, etc.}; Home automation hubs using artificial intelligence comprised of voice-activated speakers, computer hardware, and recorded software for miscellaneous consumer activities, namely, {further specify, i.e., for online ordering}; Home theater systems comprising receivers, digital players, speakers; Infrared cameras; Intelligent personal assistant devices comprised of voice-activated speakers, computer hardware, and recorded software for miscellaneous consumer activities, namely, {further specify, i.e., for online ordering}; IP (Internet protocol) cameras; Lens filters; Lenses for cameras; Lenses for smartphone cameras; Lights for use with digital cameras, video cameras and cameras; Loud speaker systems; Loud speakers; Metal depository containing a video camera, display screen, touch screen user interface and access card reader to record deposits; Mirrorless cameras; Monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; Motion-activated cameras; Mounting devices for cameras and monitors; Multiframe view cameras; Multiple purpose cameras; Nautical and photographic apparatus and instruments, namely, underwater housings for cameras, underwater enclosures for cameras and underwater enclosures for photographic lenses; Photographic cameras; Photographic cameras for the instant production of pictures; Photographic flash units; Portable vibration speakers; Protective hard and soft cases for audio equipment in the nature of {specify type of audio equipment the cases are used for, i.e., speakers}; Public address (PA) and sound system accessories, namely, microphone stands, speaker stands, microphone cables, speaker cables, speaker boxes and sound mixers; Range finders for cameras; Remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; Remotely-controlled sub-aquatic video camera containing a TV camera, transmitter, receiver and microphone to record, detect, measure, survey and locate objects underwater; Self-timers; Solar recharging battery pack for digital cameras; Soundbar speakers; Stands adapted for stereos and audio speakers; Television cameras; Thermal imaging cameras; Tripods; Tripods for cameras; TV cameras; Underwater cameras; Vehicle safety equipment, namely, back-up sensors and cameras; Video cameras; Viewfinders; Wearable cameras; Wireless speakers; Wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functional to purchase music, games, video and software applications over the air for downloading to the device; Wireless communication devices for transmitting images taken by a camera”.

 

International Class 016: “Protective shipping cases in the nature of cardboard boxes for audio equipment”.

 

International Class 020: “Protective wooden storage crates for audio equipment”.

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

CLARIFY ENTITY TYPE

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.02(a). 

 

If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record.  TMEP §803.03(a).  Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization.  TMEP §803.03(h).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

RESPONSE

 

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.   

 

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more 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.  

 

 

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

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 118

(571) 272 1168

Lee-anne.Berns@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 October 07, 2019 for

U.S. Trademark Application Serial No. 88522192

 

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. 

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 118

(571) 272 1168

Lee-anne.Berns@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 October 07, 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.”