Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  July 02, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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.

 

However, applicant must respond to the following requirement.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

The word “ballast” in the identification of goods is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. “Ballast” could include such goods as “lighting ballasts” in International Class 9, “external ballast and bilge water filtering and absorbing device for use in a local containment area for removing aquatic nonindigenous species, oil and other contaminants from the effluent” in International Class 11, and “ship ballast tanks” in International Class 12.

 

Furthermore, the wording “bus (computing)” is indefinite and requires further clarification as to the nature of the goods being offered (e.g., hardware or downloadable software or both). See TMEP §1402.01.

 

Finally, the wording “bus (computing)” and “power supplies (electrical)” is not acceptable because it contains parentheses, which should not be used in identifications so as to avoid confusion with the USPTO’s practice of using parentheses an affidavit of incontestability to indicate goods 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. Because applicant’s parenthetical information does not serve this limited purpose, applicant must remove the parentheses from the identification and incorporate the parenthetical information into the description of the goods.

 

Applicant may adopt the following identification of goods, if accurate:

 

Electronic advertisement boards featuring a neon lamp; electrical switches; electric transformers; rectifiers; electric connectors; lighting ballasts; USB (universal serial bus) hardware and downloadable USB (universal serial bus) operating software; surge protectors; internal cooling fans for computers; voltage stabilizers; electrical ducts; DC/AC power converters; electrical power supplies; uninterruptible electrical power supplies; chargers for batteries; power controllers; time recording apparatus; electrical storage batteries; electrical control panels; electric converters

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 or add goods not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

Applicant submitted a fee sufficient for only one class of goods; however, as noted previously, the word “ballast” could refer to goods in more than one class. Therefore, in response to the requirement that applicant amend the identification of goods, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(a)  List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(b)  Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Standard application is $275 per class (view the USPTO’s current fee schedule). 

 

See 37 C.F.R. §§2.6(a)(1)(iii), 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.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Arguments against a refusal and/or requirement are considered responses to an Office action, and responses to Office actions will not be accepted if submitted informally by telephone or email. See TMEP §709.05. Therefore, no arguments against a refusal and/or requirement will be considered if provided by telephone or email.

 

All informal communications relevant to this application will be placed in the official application record, however. Applicant may use informal communications such as telephone and email to authorize changes that will immediately put the application in publication status via Examiner’s Amendment.

 

The response must be signed by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

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 July 02, 2020 for

U.S. Trademark Application Serial No. 88865417

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 July 02, 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.”