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 24, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

• Requirement of Definite Identification and Appropriate Classification
• Multiple-Class Application Requirements
• Disclaimer Required

 

REQUIREMENT OF DEFINITE IDENTIFICATION AND APPROPRIATE CLASSIFICATION

 

Certain wording in the identification of goods is indefinite and must be clarified for the reasons discussed below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

As an initial matter, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

In addition, applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Also, the identifications for software and computer programs/applications in Class 9 are indefinite in that they must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).

 

In addition, the identification entries in the bulleted list below are too broad and can encompass goods that are in more than one class (as the parenthetical examples demonstrate):

 

• “intercommunication apparatus” (for e.g., “telephones incorporating intercommunication systems” are in Class 9, but “illustration boards displaying words, phrases, and pictures for use by patients to communicate with health care providers about their physical condition when unable to do so verbally” are in Class 10);
• “measuring devices, electric” (for e.g., “pulse measuring device, electric” is in Class 10, but “measuring apparatus, namely, clamp meter for measuring electricity” is in Class 9);
• “measuring instruments” (for e.g., “heartbeat measuring apparatus” is in Class 10, but “measuring apparatus, namely, clamp meter for measuring electricity” is in Class 9);
• “cord connected” (for e.g., “cord” is in Class 22, but “electric cords” are in Class 9); and
• “direct plug-in” (for e.g., “plug-in hybrid cars” are in Class 12, but “plug-in connectors” are in Class 9).

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Accordingly, applicant should further specify the nature of the goods being referenced, and suggested amendments are offered below.   

 

Please note, in addition to the need for this further specification so as to allow for appropriate identification and classification, 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.

 

Please also note, proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a). 

 

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 adopt the following identification, if accurate: 

 

Class 9:  Electrical adapters; battery chargers; branch boxes, namely, electrical connection boxes; collectors, electric, namely, electric current switches; electric apparatus for commutation, namely, electric current switches; computer software applications, downloadable, namely, downloadable software for automating electrical power systems; computer software platforms, recorded or downloadable, namely, downloadable software for automating electrical power systems; connections for electric lines; data processing apparatus; electrical distribution boxes; distribution boards, namely, electrical power distribution units; distribution consoles, namely, electrical power distribution units; electronic numeric displays; galvanometers; intercommunication apparatus, namely, telephones incorporating intercommunication systems; electrical junction boxes; electricity limiters; electric measuring devices, namely, clamp meters for measuring electricity; measuring instruments, namely, micrometers and micrometer gauges; regulating apparatus, electric in the nature of voltage regulators; electric sockets; switchboards; electricity switch boxes; switches, electric; electric transformers; transmitters of electronic signals; telecommunication transmitters, namely, radio transmitters; telecommunication transmitting sets, namely, radio transmitters; voltage surge protectors; relocatable electrical power taps; cord connected connectors, namely, plug-in connectors; direct plug-in, namely, plug-in connectors; electrical power distribution units; surge protector device, namely, surge protectors; USB charger, namely, USB charging ports; uninterruptible power system, namely, uninterruptible electrical power supplies; furniture power distribution units, namely, USB charging ports   

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class.  Therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods 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 that could potentially be classified in at least 2 classes.  However, applicant submitted a fee sufficient for only 1 class.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “SURGE” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

Applicant seeks to register SURGE MILEAGE for the following goods in Class 9:

 

Electrical adapters; battery chargers; branch boxes (electricity); collectors, electric; electric apparatus for commutation; computer software applications, downloadable; computer software platforms, recorded or downloadable; connections for electric lines; data processing apparatus; distribution boxes (electricity); distribution boards (electricity); distribution consoles (electricity); electronic numeric displays; galvanometers; intercommunication apparatus; junction boxes (electricity); limiters (electricity); measuring devices, electric; measuring instruments; micrometers / micrometer gauges; regulating apparatus, electric; electric sockets; switchboards; switchboxes (electricity); switches, electric; transformers (electricity); transmitters of electronic signals; transmitters (telecommunication); transmitting sets (telecommunication); voltage surge protectors; relocatable power taps; cord connected; direct plug-in; PDU (Power Distribution Unit); surge protector device; USB charger; UPS (Uninterruptible power system); furniture power distribution units

 

(bolded emphasis added by examining attorney).  Accordingly, in the context of applicant’s identified goods, the word “SURGE” is merely descriptive of a characteristic, quality, feature, and/or function of those goods—as applicant’s own identification demonstrates.  Thus, because “SURGE” is merely descriptive in the context of applicant’s identified goods, this term must be disclaimed.

                                                                                                                                 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SURGE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@uspto.gov

 

 

ADDITIONAL 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 24, 2020 for

U.S. Trademark Application Serial No. 88783736

 

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. 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@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 24, 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.”