Offc Action Outgoing

ELFE

Sony Corporation

U.S. Trademark Application Serial No. 90006647 - ELFE - 41279.3276

To: Sony Corporation (bhipdocket@bakerlaw.com)
Subject: U.S. Trademark Application Serial No. 90006647 - ELFE - 41279.3276
Sent: August 06, 2020 03:56:03 PM
Sent As: ecom121@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 90006647

 

Mark:  ELFE

 

 

 

 

Correspondence Address: 

ROBERT B.G. HOROWITZ, ESQ.

BAKER & HOSTETLER LLP

45 ROCKEFELLER PLAZA, 14TH FLOOR

NEW YORK, NY 10111

 

 

 

Applicant:  Sony Corporation

 

 

 

Reference/Docket No. 41279.3276

 

Correspondence Email Address: 

 bhipdocket@bakerlaw.com

 

 

 

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:  August 06, 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

 

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:

  • IDENTIFICATION OF GOODS
  • MULTIPLE-CLASS REQUIREMENTS

 

 

IDENTIFICATION OF GOODS

 

Applicant has classified “electronic door closing control systems” in International Class 009; however, the proper classification is International Class 007.  Therefore, applicant may respond by (1) adding International Class 007 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “electronic door closing control systems” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The identification for computer programs in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

The table below outlines specific issues and provides suggestions.

 

Original Language

Issue

Suggestion

Electronic image analysis equipment, namely, computers, all being used for use with a core library that generates discriminant algorithms by machine learning

Acceptable

 

 geiger counters

Acceptable

 

 cyclotrons

Acceptable

 

 industrial betatrons

Acceptable

 

 magnetic object detectors, seismic exploration machines and apparatus, hydrophones, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, electronic door closing control systems and electron microscopes

Overbroad

 

International Class 007: electronic door closing control systems

 

International Class 009: magnetic object detectors, seismic exploration machines and apparatus, hydrophones, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, and electron microscopes

 computer programs for data processing

Indefinite

downloadable computer programs for data processing

 computer software for a core library that generates discriminant algorithms by machine learning

Indefinite

downloadable computer software for a core library that generates discriminant algorithms by machine learning

 computer programs for machine learning

Indefinite

downloadable computer programs for machine learning

 computer programs for image analysis

Indefinite

downloadable computer programs for image analysis

 computer programs for numerical analysis in time series

Indefinite

downloadable computer programs for numerical analysis in time series

 personal digital assistants in the shape of a watch

Acceptable

 

 smartphones

Acceptable

 

 downloadable music files

Acceptable

 

 

Applicant may adopt the following wording, if accurate: 

 

International Class 007: Electronic door closing control systems

 

International Class 009: Electronic image analysis equipment, namely, computers, all being used for use with a core library that generates discriminant algorithms by machine learning; geiger counters; cyclotrons; industrial betatrons; magnetic object detectors, seismic exploration machines and apparatus, hydrophones, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, and electron microscopes; downloadable computer programs for data processing; downloadable computer software for a core library that generates discriminant algorithms by machine learning; downloadable computer programs for machine learning; downloadable computer programs for image analysis; downloadable computer programs for numerical analysis in time series; personal digital assistants in the shape of a watch; smartphones; downloadable music files

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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 REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)       List the goods and/or services 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 and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

 

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

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

 

/Tricia L. Brown/

Examining Attorney

Law Office 121

(571) 270-7892

tricia.brown@uspto.gov

 

 

 

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.  

 

 

 

U.S. Trademark Application Serial No. 90006647 - ELFE - 41279.3276

To: Sony Corporation (bhipdocket@bakerlaw.com)
Subject: U.S. Trademark Application Serial No. 90006647 - ELFE - 41279.3276
Sent: August 06, 2020 03:56:05 PM
Sent As: ecom121@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 06, 2020 for

U.S. Trademark Application Serial No. 90006647

 

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. 

 

 

/Tricia L. Brown/

Examining Attorney

Law Office 121

(571) 270-7892

tricia.brown@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 August 06, 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.”

 

 

 


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