To: | Sony Corporation (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88896137 - DSEE EXTREME - 041279.3236 |
Sent: | June 09, 2020 08:09:59 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88896137
Mark: DSEE EXTREME
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Correspondence Address: 45 ROCKEFELLER PLAZA, 14TH FLOOR
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Applicant: Sony Corporation
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Reference/Docket No. 041279.3236
Correspondence Email Address: |
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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: June 09, 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.
Summary of Issues
Indefinite Identification of Goods
The wording in the identification of goods is indefinite and must be clarified because it is overly broad and additional specificity is required for an accurate classification of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 009: Home theater systems comprising {indicate specific electronic components, e.g., DVD players, audio amplifiers, audio speakers} [DO NOT include components that are in classes other than 9, e.g., lighting and seating]; digital cameras; video camcorders; optical disc players and recorders; mobile telephones; digital audio players and recorders; digital video players and recorders; signal processors for audio speakers; signal processors for speaker systems; earphones; subwoofers; loudspeakers; speakers for home theaters; wireless speakers; sound speakers; headphones; television sets; amplifiers; navigation apparatus for vehicles comprising on-board computers; car audio devices, namely, [specify nature of the goods eg. radios for vehicles]; audio amplifiers for use in automobiles; audio optical disc players for use in automobiles; digital audio players for automobiles; portable digital multimedia players; portable digital audio players; blank magnetic and optical data carriers; head-mounted video displays; smartphones; personal digital assistants in the shape of a watch; computers; laptop computers; tablet computers; computer peripheral devices; downloadable computer software for [specify function of goods and/or content or field specific]; downloadable computer application software for [specify function and/or content or field specific]; downloadable computer software for processing digital music files; downloadable computer programs for [specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use]; digital music downloadable from the Internet; phonograph records featuring [indicate subject matter]; downloadable music files; exposed cinematographic films; exposed slide films; slide film mounts
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
§44(d) Sole Basis with Intent to Perfect §44(e)
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
How to respond. Click to file a response to this nonfinal Office action.
Hines, Regina
/Regina C. Hines/
Law Office 114
571-272-9451
Regina.Hines@uspto.gov
RESPONSE GUIDANCE