To: | Creative Technology Ltd. (IPDocketWashington@mwe.com) |
Subject: | U.S. Trademark Application Serial No. 88553337 - HEADPHONE HOLOGRAPHY - 065985-0144 |
Sent: | November 04, 2019 04:13:26 PM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88553337
Mark: HEADPHONE HOLOGRAPHY
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Correspondence Address: |
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Applicant: Creative Technology Ltd.
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Reference/Docket No. 065985-0144
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: November 04, 2019
The assigned trademark examining attorney has reviewed the referenced application and has determined the following. Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Summary of Issues
Request for Information
Disclaimer
In this case, applicant must disclaim the wording “HEADPHONE” 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 and/or services. 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 term headphone is the generic name of applicant’s headphones and also describes the purpose, feature and/or function of the related goods for use with headphones.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HEADPHONE” 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 underlined wording in the identification of goods shown below is unacceptable and must be clarified because it is too broad. Suggested amendments with explanation are shown in bold italics. See TMEP §1402.01.
The Office requires a degree of particularity necessary to clearly identify the goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966).
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant may adopt the following identification, if accurate:
International Class 009: Integrated circuits, computer hardware; {specify downloadable or recorded} computer operating system software; Digital signal processing chips; computer hardware and recorded {must specify whether software is recorded or downloadable} computer software to control and improve computer and audio equipment sound; {specify downloadable or recorded} computer software for operating multimedia recording and playback devices and consumer electronic devices; computer memories; computer interfaces; computer peripheral devices; downloadable computer software applications for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; downloadable computer programs for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; portable computer {must specify type of hardware} hardware to control and improve audio equipment sound; apparatus for processing audio and/or visual signals; sound recording apparatus; sound reproduction apparatus; sound transmitting apparatus; pre-recorded digital and electronic media devices featuring interactive sound and visual recordings in the nature of music, and also featuring images, audio, video and audio-visual content in the fields of personal gaming and music; downloadable interactive computer software for computer games; amplifiers; MP3 players; MP4 players; sound cards; earphones; headphones; headphone systems, consisting of headphones, stereo cables and amplifiers; subwoofers; loud speakers; wireless speakers; remote controls for radios, televisions, and stereos; electronic audio apparatus in the nature of {specify type of apparatus} for consumer use; electronic components in the nature of {specify type of components} consumer use; electronic devices for the transmission of data, sound or images, all for consumer use; downloadable digital music all provided on-line from databases or from the Internet or from any other communications network; digital music downloadable from the Internet; electronic communication equipment and instruments, namely, computer hardware, portable computers, apparatus for transmission of communication, communication hubs, and communications servers; cordless telephones; telephones, mobile telephones; cellular telephones; video phones, parts and accessories for mobile telephones, namely, hands free kits for mobile telephones, fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for mobile telephones, cases for mobile telephones; mobile digital electronic devices, namely, electronic personal organizers, mobile telephones, personal digital assistants, and portable telecommunication instant messaging devices; computer hardware for telecommunications; {specify downloadable or recorded} computer telephony software; telecommunications equipment, namely, telephones and videophones, computer hardware for voice mail, caller ID (identification) and voice over IP (Internet protocol), {specify whether part of preceding telecommunications equipment and specify downloadable or recorded for all following computer software} computer software for voice mail recording and playback, computer software for rendering and display of caller ID (identification information), computer software for telecommunications access via voice over IP (Internet protocol), telephone flat panel display screens, video screens, video screens for use within a video phone, and video cameras for use in a video phone; telephone-based information retrieval {specify downloadable or recorded} computer software and computer hardware; telecommunications apparatus and instruments, namely, apparatus for recording, transmission or reproduction of sound and images, and apparatus for transmission of communication; portable handheld digital electronic devices in the nature of electronic personal organizers, mobile telephones, personal digital assistants, portable telecommunication instant messaging devices, and apparatus for recording, transmission or reproduction of sound and images and operating software therefor; nano computers; laptop computers; tablet computers; digital satellite broadcasting systems, namely, receivers, transmitters and antennas for satellite broadcasting; electric cables; USB hubs and adapters; and all of the foregoing goods with downloadable electronic manuals distributed therewith
Foreign Registration
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 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), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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
/Kyle Christopher Peete/
Kyle Christopher Peete
Trademark Attorney [Law Office 112]
(571) 272-8275 (Phone)
(571) 273-8275 (Fax)
kyle.peete@uspto
RESPONSE GUIDANCE