Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 27, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 1, 2020.

 

In a previous Office action(s) dated April 14, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with two registered marks.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services.  Applicant was also advised that a mark in a prior-filed application may present a bar to registration because of a likelihood of confusion between the two marks.

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal(s) has been obviated:  Section 2(d) Refusal – Likelihood of Confusion as to the Specified Goods and Services Only.  See TMEP §§713.02, 714.04.  In addition, the mark in U.S. Application Serial No. 87939655 is no longer a potential bar to registration.  See Id.  

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods and Services

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The requirement for applicant to amend the identification of goods and services is now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6), §2.63(b); TMEP §1402.01.

 

The wording “installation services, namely, installation of computer equipment parts into motor vehicles vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology” in the identification of services is indefinite and must be clarified because it does not clearly specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If the services comprise two distinct services, applicant may use a semicolon to distinguish the services. 

 

Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 9:  Accepted as amended.

 

Class 37:  Computer installation services for autonomous driving; installation, maintenance and repair of computer hardware for autonomous driving; installation services, namely, installation of computer equipment parts into motor vehicles; vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology

 

            Class 42:  Accepted as amended.

 

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).

 

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 OPTIONS

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “installation services, namely, installation of computer equipment parts into motor vehicles vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and services only: 

 

Class 9:  Autonomous driving and advanced driver-assistance systems (ADAS) comprising cameras, proximity sensors, brake controllers, audible alarms, detecting and warning devices in the nature of vehicle detection equipment for detecting vehicle location and electronic warning bells, electrical communication machines and instruments in the nature of communications servers, and downloadable computer software and computer hardware to control the aforesaid; cameras; antennas; electronic navigation apparatus and instruments for autonomous driving; GPS navigation devices; automotive advanced driver-assistance systems (ADAS) proximity sensors; sensors for use in controlling the drive and operation of safety devices and equipment for motor vehicles, namely, optical sensors, radar sensors, electronic sensors for detecting, processing and recognizing traffic signs, traffic signals, and vehicular brake lights and turn signals; measuring, detection, monitoring, testing and controlling instruments, devices and controllers, namely, vehicular speedometers, brake controllers, electronic steering controllers, mileage recorders, cruise controls, electronic controls for vehicle speed, data processing units, computer hardware, downloadable firmware and downloadable software for monitoring conditions within a vehicular system and controlling functions of vehicles; obstacle detecting and warning devices comprised of radar apparatus, camera, electronic display interfaces, acoustic sound alarm, and control unit for detecting, displaying and warning of obstacles to motor vehicles; video monitors; electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for use with motor vehicles autonomous driving and advanced driver-assistance systems (ADAS); computer hardware and downloadable computer software for use with vehicular autonomous driving, safety systems; on-board electronic systems in vehicles comprised of computer hardware and downloadable computer software for providing driving assistance; computer hardware and downloadable software for driver monitoring

 

Class 37:  Computer installation services for autonomous driving; installation, maintenance and repair of computer hardware for autonomous driving

 

Class 42:  Computer programming for autonomous driving; design, engineering and technological consultancy services relating to vehicles, vehicle parts, the autonomous driving systems, and advanced driver-assistance systems (ADAS), and components; research, development, design and upgrading of computer software and computer systems for autonomous driving; research, development, design and upgrading services in the field of motor vehicles, autonomous driving and advanced driver-assistance systems (ADAS); design, maintenance and update of computer software for use in the automotive industry for autonomous driving; Software as a Service (SaaS) featuring software for autonomous driving and advanced driver-assistance systems (ADAS); design and development of devices, instruments and equipment for wireless data transmission for use in the autonomous driving and advanced driver-assistance systems (ADAS) fields

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 October 27, 2020 for

U.S. Trademark Application Serial No. 88761291

 

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. 

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 October 27, 2020, 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.”