To: | USB IMPLEMENTERS FORUM, INC. (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88572370 - CERTIFIED USB 40 GBPS - 215560-201 |
Sent: | November 01, 2019 03:08:35 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88572370
Mark: CERTIFIED USB 40 GBPS
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Correspondence Address: 1299 PENNSYLVANIA AVENUE, NW, SUITE 700
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Applicant: USB IMPLEMENTERS FORUM, INC.
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Reference/Docket No. 215560-201
Correspondence Email Address: 2371 |
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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 01, 2019
This application was approved for publication on September 26, 2019. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
Clarification of Identification and Classification of Goods and Services Required
Applicant has classified “computer game consoles” in International Class 9; however, the proper classification is International Class 28, and must be identified by game use, e.g., for recreational game playing, for gambling. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The wording “USB compatible global positioning systems consisting of computers, computer software, transmitters, receivers, and network interface devices; computer software specifically designed to control the operation of USB compatible host and devices and for use in the operation of all of the foregoing; USB compatible computer software for testing the features, compatibility, interoperability, functionality, compliance and adherence to industry standards of computers, electronics and telecommunications products ” in International Class 9 is indefinite and too broad and must be clarified to specify the format of the software and to classify the software accordingly. 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. 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).
Sample Amended Identification
A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services. Wording in italic type represents items in the identification that require clarification. Bold italic type indicates changes to applicant’s original identification. Strikethrough marking indicates wording that must be deleted. Wording in [brackets] following a
fill in the blank provides guidance and examples of acceptable amendments. For example, if the original identification is “clothing,” and the
suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing,
namely, shirts, pants and coats” in the response to the office action.
International Class 9: USB compatible computer and electronic devices, namely, computers and
computer hardware, integrated circuits, television set top boxes, computer game consoles, computer peripherals; USB compatible consumer electronics equipment, namely,
cameras, camcorders, audio and video recorders and players, MP3 players, CD players, DVD players, cellular phones, personal digital assistants; USB compatible global positioning
systems consisting of computers, recorded computer software, transmitters, receivers, and network interface devices; and USB compatible electronic measurement and test
instruments for designing and testing the features, compatibility, interoperability, functionality, compliance and adherence to industry standards of the foregoing devices, USB compatible components
and systems; computer cables and connectors; ____ [specify recorded or downloadable] computer software, ____ [specify
recorded or downloadable], specifically designed to control the operation of USB compatible host and devices and for use in the operation of all of the
foregoing; USB compatible computer software,____ [specify recorded or downloadable], for testing the features, compatibility, interoperability, functionality, compliance and
adherence to industry standards of computers, electronics and telecommunications products
International Class 28: USB compatible computer game consoles for ____ [specify use e.g., recreational game playing or gambling]
International Class 42: Design and testing of USB compatible products for third parties, namely, USB compatible computers, electronic and telecommunication products; provision of temporary use of online, non-downloadable computer software specifically designed to control the operation of USB compatible host and devices and for use in the operation of computers, computer hardware, television set top boxes, cameras, camcorders, audio and video recorders and players, MP3 players, CD players, DVD players, cellular phones, personal digital assistants, and global positioning system devices; provision of temporary use of online, non-downloadable USB compatible computer software for testing the features, compatibility, interoperability, functionality, compliance and adherence to industry standards of computers, electronics and telecommunications products
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.
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).
Multiple Class Application Requirements
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es). 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 Sections 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response Information
Link to response form: Click to file a response to this nonfinal Office action
/April Roach/
April Roach
Examining Attorney
Law Office 115
571-272-1092
April.Roach@uspto.gov
RESPONSE GUIDANCE