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:  December 29, 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:

 

• Inquiries to Which Applicant Must Respond
• Identification of Goods
• Multiple-Class Application Requirements
• Advisory – Prior-Filed Application

 

INQUIRIES TO WHICH APPLICANT MUST RESPOND

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Specifically, applicant must submit responses to the following inquiries:

 

• What is the manner in which applicant uses the word “SOURCE” or intends to use the word “SOURCE” in connection with the listed products? Please provide actual examples if available.
• Do applicant’s products accept source inputs from other devices? Please explain in detail.
• Do applicant’s products use signal sources to generate musical tones? Please explain in detail.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Specifically applicant must address issues with the following wording:

 

·         The wording “electronic audio modification equipment; apparatus for electronic processing of sound” is vague and appears to identify goods which fall into class 9, not class 15.  Only instruments and processors used as instruments generally fall into class 15.

·         The wording “digital sound processors” identifies goods which fall into class 9, not class 15.  Applicant must reclassify these goods and pay the additional fee if applicable (see below).

·         The wording “synthesizers with carrying cases; and synthesizers” is vague because of the word “synthesizer”.  Synthesizers are classified based on their use.  Generally only music synthesizers fall into class 15.

 

Applicant may adopt the following identification, if accurate:

 

            Class 9: Digital sound processors; electronic audio modification equipment, namely, [applicant must identify the types of equipment by their common commercial name, e.g., electronic effect pedals for musical instruments]; apparatus for electronic processing of sound, namely, [applicant must identify the types of apparatus by their common commercial name]

 

            Class 15: Music synthesizers; music synthesizer sold as a unit with instructional manual; music synthesizers sold with carrying cases

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  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 and/or services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Plus application is $225 per class.  See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a)(10); TMEP §§819.03, 819.04.  See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a); TMEP §820.03.  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.

 

ADVISORY – PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87253329 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

RESPONSE GUIDELINES

 

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

 

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.

 

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.  

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 December 29, 2019 for

U.S. Trademark Application Serial No. 88621186

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 December 29, 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.”