To: | CKX Group Limited (ptomail@levygrandinetti.com) |
Subject: | U.S. Trademark Application Serial No. 88622170 - CKX - BWR217US |
Sent: | January 08, 2020 09:49:04 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88622170
Mark: CKX
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Correspondence Address:
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Applicant: CKX Group Limited
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Reference/Docket No. BWR217US
Correspondence Email Address: |
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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: January 08, 2020
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
1. Foreign Registration Certificate Required
2. Amended Identification of Goods and Services Required
FOREIGN REGISTRATION CERTIFICATE REQUIRED
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, the 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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. 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), 806.03(h).
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and/or services requires clarification in several respects.
The identification of goods and/or services must be clarified because many of the goods and/or services are indefinite and/or broad, and therefore, do not clearly and specifically indicate the nature of goods and/or services for which registration is sought. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Therefore, applicant must amend the referenced wording below in accordance with the bolded guidance provided below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please note that, in some instances, examining attorney has replaced any unacceptable wording with acceptable wording.
Applicant may adopt the following wording, if accurate:
· “Downloadable computer software for __________ {indicate purpose or function of the software, e.g., encryption, word processing, use as an electronic wallet, maintaining and operating a computer system, database management, creating music videos}; downloadable computer software relating to artificial intelligence, namely, downloadable computer software for __________ {indicate purpose or function of the software, e.g., encryption, word processing, use as an electronic wallet, maintaining and operating a computer system, database management, creating music videos}; computer software relating to the Internet of Things (IoT), namely, downloadable computer software for __________ {indicate purpose or function of the software, e.g., encryption, word processing, use as an electronic wallet, maintaining and operating a computer system, database management, creating music videos}; downloadable computer application software for remotely controlling devices connected to the Internet of Things (IoT), namely for controlling __________ {indicate devices, e.g., computer operating systems, telephones, radios, sensors}; computer hardware; computer hardware devices featuring artificial intelligence technology; computer hardware modules for use in Internet of Things (IoT), namely, computer hardware; electronic devices, namely, __________ {indicate specific type of electronic devices in International Class 009, e.g., electronic devices for measuring electric current, electronic devices for encoding and programming transponder keys, energy submeters for tracking and monitoring energy usage}; electronic devices featuring artificial intelligence technology, namely, __________ {indicate specific type of electronic devices in International Class 009, e.g., electronic devices for measuring electric current, electronic devices for encoding and programming transponder keys, energy submeters for tracking and monitoring energy usage}; electronic devices for connection to the Internet of Things (IoT), namely, __________ {indicate specific type of electronic devices in International Class 009, e.g., wireless routers, gateway routers in the nature of computer control hardware},” in International Class 009.
· “Business consultancy and advice services; business consultancy and advice services in relation company mergers and buyouts; business consultancy and advice services in relation company mergers and buyouts in the field of technology and science companies,” in International Class 035.
· “Research, design and maintenance of computer software; research, design and maintenance of artificial intelligence computer software; research, design and maintenance of Internet of Things (IoT) computer software; technological research, design and maintenance of computer hardware; technological research, design and maintenance of computer hardware and electronic devices featuring artificial intelligence technology; technological research, design and maintenance of computer hardware and electronic devices for connection to the Internet of Things (IoT); consultancy and advisory services in relation to all the aforesaid services,” in International Class 042.
The services are acceptable as submitted in International Class 035.
Note that proposed changes are indicated in bold. Wording that should be deleted is shown with a line
through it as follows: strikethrough. Some items require applicant to include more
complete information. These are designated with a blank space ______ followed by bold braces { } and italicized
explanatory text. The information in the braces is suggested as an example for applicant to follow, not to merely be “cut and pasted”. Applicant should enter amendments in standard font, not
in bold, italics or strikethrough. Furthermore, no braces should be included in applicant’s amended identification. Applicant should also note that the above
identification is merely a suggestion and applicant is responsible for providing an accurate and acceptable identification.
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
(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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE ADVISORIES
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.
/Breanna Freeman/
Examining Attorney
Law Office 114
571-272-7099
breanna.freeman@uspto.gov
RESPONSE GUIDANCE