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:  April 08, 2020

 

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.

 

NO CONFLICTING MARKS FOUND

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

However, applicant must respond to the following requirement(s) before registration can be granted.

 

IDENTIFICATION OF GOODS AND SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Applicant’s goods and services are identified as follows:

 

            Class 9:     Computer hardware, namely, routers, wireless networks and wireless access point (WAP) devices; wireless routers; wireless router nodes; computer firmware and software for controlling the operation of internet devices; computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks

 

            Class 38:   Consultation services in the field of wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and Wi-Fi equipment; provision of information, advice and assistance relating to all the aforementioned services

 

            Class 42:   Technical consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices

 

Goods in International Class 9

 

The wording “Computer hardware, namely, routers, wireless networks and wireless access point (WAP) devices” in the identification of goods is indefinite and must be clarified because “wireless networks” are not computer hardware and, thus, the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices.”

 

The wording “wireless router nodes” in the identification of goods is indefinite and must be clarified because the specific nature, purpose and use of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “wireless router nodes, namely, wireless routers manufactured and designed for providing wireless network telecommunications connectivity.”

 

The identification for computer firmware and software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  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).

 

Services in International Class 38

 

The wording “Consultation services in the field of wireless networks, wireless routers and wireless access point (WAP) devices” in the identification of services is indefinite and must be clarified because the field of the consulting and information is unclear.  Specifically, applicant has named particular goods, but has not clarified the type of information they provide in relation to these goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may, for example, clarify that they provide, e.g., telecommunications consultation relating to wireless networks, wireless routers and wireless access point (WAP) devices, if accurate.

 

The wording “WiFi” in the identification of services is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the services.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No(s). 2523241 and 2525795. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Services in International Class 42

 

The identification of services in International Class 42 is indefinite and must be clarified because the field of the consulting and information is unclear.  Specifically, applicant has named particular goods, but has not clarified the type of information they provide in relation to these goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may, for example, clarify that they provide, e.g., telecommunications technology consulting and information, if accurate.

 

Applicant may adopt the following identification of goods and services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:

 

            Class 9:     Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; downloadable computer firmware and downloadable computer software for controlling the operation of wireless networks and wireless access point (WAP) devices; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks

 

            Class 38:   Telecommunications consultation services relating to wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and wireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned services

 

            Class 42:   Telecommunications technology consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices

           

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).

 

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.

 

PARTIAL ABANDONMENT ADVISORY

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 9, 38 and 42 will be deleted from the application:  Computer hardware, namely, routers, wireless networks and wireless access point (WAP) devices; wireless routers; wireless router nodes; computer firmware and software for controlling the operation of internet devices; computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; computer software for connecting, managing, securing and operating local and wide area networks, in International Class 9; Consultation services in the field of wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and Wi-Fi equipment, in International Class 38; and Technical consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices in International Class 42. 

 

The application will then proceed with the following goods in International Class 9 only:  Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 April 08, 2020 for

U.S. Trademark Application Serial No. 88764833

 

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. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 April 08, 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.”