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:  September 18, 2020

 

 

 

 

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

 

 

 

 

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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 (Advisory)

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.

 

 

 

Applicant must respond to the requirement(s) set forth below.

 

 

 

IDENTIFICATION AND CLASSIFICATION

Applicant has provided the following identification and classification of goods and/ or services in its application:

 

Class 9:           Loudspeakers; audio apparatus and equipment; cabinets adapted for use with loudspeakers; loudspeaker stands; loudspeaker housings, loudspeaker systems, control apparatus and equipment therefor; electronic controllers for loudspeakers; amplifiers and other sound reinforcement apparatus; sound delivery systems; crossover networks; apparatus and instruments for recording, transmission or reproduction of sound; microphones; sound reverberation units; apparatus for amplifying, reinforcing, mixing, modifying, controlling and disseminating sound; controls for apparatus and instruments for recording, transmission or reproduction of sound; computer software for use in conjunction with any of the foregoing apparatus and equipment; parts and fittings for all the aforementioned goods 

 

The wording shown above in bolded text in the identification of goods is unacceptable as indefinite; specifically, "audio apparatus and equipment," "loudspeaker housings, loudspeaker systems, control apparatus and equipment therefor," "amplifiers and other sound reinforcement apparatus; sound delivery systems; crossover networks," "sound reverberation units; apparatus for amplifying, reinforcing, mixing, modifying, controlling and disseminating sound; controls for apparatus and instruments for recording, transmission or reproduction of sound; computer software for use in conjunction with any of the foregoing apparatus and equipment; parts and fittings for all the aforementioned goods" must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  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.

 

The reference to “computer software” is indefinite in class 9. On 1/1/2019 the USPTO implemented Nice 11-2019, and now computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.  If the software is temporary or online non-downloadable use, then the software would be in class 42.   See TMEP §1402.03(d). Applicant must also indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  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.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14.  The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Applicant may adopt the following identification, if accurate: 

• Loudspeakers; audio apparatus and equipment, namely, [INDICATE item by common commercial name, e.g.,  audio mixers and audio amplifiers]; cabinets adapted for use with loudspeakers; loudspeaker stands; loudspeaker housings; loudspeaker systems, control apparatus and equipment therefor namely, remote controls for loudspeaker systems; electronic controllers for loudspeakers; amplifiers; sound reinforcement apparatus, namely, [INDICATE item by common commercial name, e.g.,  stereo receivers and signal processors]; sound delivery systems comprising loudspeakers and amplifiers; crossover networks consisting primarily of sound equalizers and crossovers; apparatus and instruments for recording, transmission or reproduction of sound; microphones; sound reverberation units, namely, [INDICATE item by common commercial name, e.g.,  loudspeakers and subwoofers]; apparatus for amplifying, reinforcing, mixing, modifying, controlling and disseminating sound, namely, [INDICATE item by common commercial name, e.g.,  sound amplifiers, sound mixers and audio mixers]; Electronic controllers for recording, transmission, reproduction of sound apparatus; electronic controllers for loudspeakers; downloadable computer software for amplifying, reinforcing, mixing, modifying, controlling, and disseminating sound for use in conjunction with loudspeakers, loudspeaker systems, amplifiers; structural parts and fittings for all the aforementioned goods  (INT. CLASS 9)

 

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.

 

 

 

 

Dual FILING Bases -  §1(b) & §44 (option to delete  Section 1(b))

  The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

 

 

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

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. 

 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 September 18, 2020 for

U.S. Trademark Application Serial No. 90002028

 

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. 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 September 18, 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.”