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:  November 14, 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.

 

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).

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

 

• Disclaimer Required
• Amended Identification of Goods and Services Required
• Clarification of Number of Classes Required – Multiple Class Application Requirements
• Amended Mark Description Required

 

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 term “20” because it is not inherently distinctive.  This unregistrable term at best is merely descriptive of a feature of Applicant’s goods and 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 attached Internet evidence, including evidence from Applicant’s website, demonstrates the number “20” refers to “20 Gbps” or the data transfer speed of Applicant’s USB products and associated services. Thus, as the number “20” merely describes a key feature of the goods and services, this term must be disclaimed.

 

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

 

No claim is made to the exclusive right to use “20” 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. 

 

AMENDED IDENTIFICATION 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 the Examining Attorney to examine the application properly and make appropriate decisions concerning possible conflicts between 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 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

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

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.

 

CLARIFICATION OF NUMBER OF CLASSES REQUIRED –

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least three classes; however, Applicant submitted fees sufficient for only two classes.  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.

 

AMENDED MARK DESCRIPTION REQUIRED

 

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 a semi-circle to the left of the stylized number “20” followed by an arrow design consisting of three prongs ending in an arrow, square, and circle, all inside a design of a battery.

 

RESPONSE GUIDELINES

 

For this application to proceed, Applicant must explicitly address each requirement in this Office action.  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.

 

Click to file a response to this nonfinal Office action  

 

ASSISTANCE

 

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 requirements 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. 

 

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.  

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 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 November 14, 2019 for

U.S. Trademark Application Serial No. 88572442

 

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. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 November 14, 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.”