To: | Martin Audio Ltd (trademarks@hahnlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90002028 - TORUS - 209944.00047 |
Sent: | September 18, 2020 07:28:02 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90002028
Mark: TORUS
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Correspondence Address:
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Applicant: Martin Audio Ltd
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Reference/Docket No. 209944.00047
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: September 18, 2020
How to respond. Click to file a response to this nonfinal Office action.
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SEARCH OF USPTO DATABASE OF MARKS (Advisory)
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:
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))
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