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 07, 2019

 

 

 

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).

 

REQUIREMENTS

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATION

 

The identification contains wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, the following entries require revision:

 

Class 9

“Scientific, nautical, geodesic, photographic, cinematographic, optical, weighing, measuring, signaling, inspecting, life-saving and educating apparatus and instruments” is indefinite. The applicant must identify specific Class 9 goods.

 

“magnetic recording media” must specify the format and contents.

 

“acoustic discs” must specify the format and contents. 

 

“compact discs, DVDs and digital recording media” must specify the format and contents.

 

“electronic pocket apparatus for the detection, storage, monitoring, surveillance and transmission of data relating the activity of the user, namely, the position, the route, the distance done, the heart rhythm” is overbroad. For example, heart rate monitors belong in Class 10.

 

“software” is overbroad.

 

Class 35

“Retail sale and wholesale in shops and online, by catalogue, by post, by phone, by radio or television and by other electronic means in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing, sport articles” is overbroad.

 

“product presentation for the retail sale by all means of communication in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles” is overbroad.

 

Class 36

“Sponsoring of social, charitable, environmental and scientific organizations” is indefinite.

 

Class 41

“educational services, namely, training, organization and animation of lessons” is indefinite.

 

The wording “distribution” and “other” in “publication, lending and distribution of books, journals, magazines, CD-ROMs, video films and other publications” is overbroad.

 

“elaboration, production, editorship and realization of audio visual programs via the internet” is overbroad.

 

“cine film and videotape production” is unclear.

 

“organization and holding of congresses, seminars, lectures and educative activities” is indefinite.

 

“photo, cinema and video reportages” is indefinite.

 

“organization of educational activities” is indefinite.

 

 

 

Applicant may substitute the following wording, if accurate: 

 

            Class 9

Scientific microscopes, nautical sextants, geodesic, photographic filters, cinematographic cameras, optical cables, weighing scales, measuring cups, signaling buoys, inspecting mirros, life-saving rafts and medical teaching mannequins; apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or ordering of electricity; apparatus for recording, transmitting or reproducing sound or images; magnetic recording media, namely, blank audio tapes; audio discs featuring music; compact discs, DVDs, and downloadable digital recordings featuring live music; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; computers; wrist-wearable computers; smartwatches; electronic pocket apparatus, namely, GPS tracking device for an athlete during endurance events; downloadable software for telling time; optic apparatus and instruments, namely, spectacles, sunglasses, magnifying glasses; cases for spectacles, sunglasses and magnifying glasses; batteries for computers and electric apparatus; batteries or watchmaking and chronometric instruments

 

            Class 14

Precious metals and their alloys; figurines made of precious metals; trophies made of precious metal; jewelry, namely, rings, earrings, cuff links, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely, chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks and parts and accessories for the aforesaid goods, namely, hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces; apparatus for the timekeeping of sport events

 

            Class 35

Retail sale and wholesale store services in shops and online, by catalogue, by post, by phone, by radio or television and by other electronic commerce featuring watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing, sport articles; organizing and conducting of product presentations for the retail sale by all means of communication in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles; sale promotion for the benefit of others; sale promotion of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles for the benefit of others; publicity, marketing and public relations services; publicity services for the purchase and sale of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles; management of commercial business; commercial administration; office work; organization of expositions for commercial or publicity reasons; advice for the organization and the management of business in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles

 

            Class 36

Financial sponsorship of social, charitable, environmental and scientific organizations; putting financial assistance at the disposal of social, charitable, environmental and scientific organizations; provide information concerning fundraising for charity; financial assistance intended for research in the field of applied sciences, inventions, exploration, discoveries and the environment

 

            Class 41

Organization of cultural events; educational services, namely, training and organization and animation of lessons in the field of watches; publication and lending and distribution of books, journals, magazines, CD-ROMs, video films and electronic publications; production and editing of audio visual programs via the internet; cinema film and videotape production; organization and holding of congresses, seminars, lectures and educational exhibitions in the field of watches; arts and entertainment reporting in the field of photo, cinema and video reportages; organization of educational activities, namely, watch repair training

 

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

RESPONSE

 

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.

 

If applicant does not timely respond to this Office action, the following will be deleted from the application:

 

Class 9

Scientific, nautical, geodesic, photographic, cinematographic, optical, weighing, measuring, signaling, inspecting, life-saving and educating apparatus and instruments; magnetic recording media; acoustic discs; compact discs, DVDs and digital recording media; electronic pocket apparatus for the detection, storage, monitoring, surveillance and transmission of data relating the activity of the user, namely, the position, the route, the distance done, the heart rhythm; software

 

Class 35

Retail sale and wholesale in shops and online, by catalogue, by post, by phone, by radio or television and by other electronic means in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing, sport articles; product presentation for the retail sale by all means of communication in the field of watchmaking products, smartwatches, jewelry, perfumes, spectacles and sunglasses, leather articles, clothing and sport articles

 

Class 36

Sponsoring of social, charitable, environmental and scientific organizations

 

Class 41

educational services, namely, training, organization and animation of lessons; publication, lending and distribution of books, journals, magazines, CD-ROMs, video films and other publications; elaboration, production, editorship and realization of audio visual programs via the internet; cine film and videotape production; organization and holding of congresses, seminars, lectures and educative activities; photo, cinema and video reportages; organization of educational activities

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the remaining goods and services only.  See TMEP §718.02(a). 

 

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  

 

 

/Samuel R. Paquin/

Trademark Examining Attorney

Law Office 101

United States Patent & Trademark Office

(571) 272-2514

spaquin@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 November 07, 2019 for

U.S. Trademark Application Serial No. 88657495

 

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. 

 

 

/Samuel R. Paquin/

Trademark Examining Attorney

Law Office 101

United States Patent & Trademark Office

(571) 272-2514

spaquin@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 07, 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.”