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:  October 22, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of Office’s 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.

 

Summary of Issues:

 

• Amended identification of goods and services required;
• Foreign registration required; and
• Advisory regarding Section 44(e).

 

Amended Identification of Goods and Services Required

 

The classification and identification of goods and services in the application are:

 

Class 009:       Computers; handheld computers; microcomputers; minicomputers; memory boards; personal digital assistants; portable and handheld electronic personal organizers; computer hardware; integrated circuits; integrated circuit memories; integrated circuit chips; chip-sets; semiconductor processors; semiconductor processor chips; semiconductor chips; microprocessors; printed circuit boards; electronic circuit boards; computer motherboards; computer memories; computer operating systems; micro-controllers; data processors; central processing units; semiconductor memory devices; software programmable microprocessors; digital and optical microprocessors; digital and optical data and signal processors; video circuit boards; audio circuit boards; audio-video circuit boards; video graphic accelerators; multimedia accelerators; video processors; video processor circuit boards; processor die packaging and casings; cards, discs, tapes, wires, records, microchips and electronic circuits, all for the recordal and transmission of data; modems; apparatus and instruments, all for processing, storage, retrieval, transmission, display, input, output, compressing, decompressing, modifying, broadcasting and printout of data; computer input and output devices; work stations; data memories; storage devices; security systems for computer hardware and software; set electronic chips; components for computers and printed circuits; voice accelerators; voice, data, image and video accelerators; flash memories; flash memory devices; memory systems for computers; cables and adapters; computer terminals and printers for use therewith; video display units; telecommunications apparatus and instruments; cameras; computer hardware for computing; computer hardware for computing via a global and local network; computer hardware for cloud-computing; computer hardware for low-latency and high bandwidth computing; computer hardware for use in providing a secure computing environment; computer networking hardware; computer communication servers; computer hardware for use in providing a secure cloud computing network; computer software for computing; computer software for cloud computing; computer software for computing via a global and local network; computer software for low-latency and high bandwidth computing; computer memory hardware; computer software for providing a secure computing network; computer software for use in providing a secure cloud computing network; computer operating system software; computer system extensions, tools and utilities in the field of application software for connecting personal computers, networks, telecommunications apparatus and global computer network applications; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of data; computer network adapters; computer network controllers; computer network interface devices; computer network hubs, switches, and routers; microcontrollers for internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing mobile internet of things (IoT) enabled mobile devices; computer hardware and software for the development, maintenance, and use of local and wide area computer networks; computer hardware and software for the development, maintenance, and use of interactive audio-video computer conference systems; computer hardware and software for the receipt, display, and use of broadcast video, audio, and digital data signals; electronic control devices for the interface and control of computers and global computer and telecommunications networks with television and cable broadcasts and equipment; routers; hubs; servers; switches; apparatus for testing and programming integrated circuits; peripheral memory apparatus and devices; computer networking hardware; semiconductor devices; computer hardware and software for creating, facilitating, and managing remote access to and communication with local area networks (lans), virtual private networks (vpn), wide area networks (wans) and global computer networks; router, switch, hub and server operating software; computer software tools for the facilitation of third party software applications; computer hardware and software for wireless network communications; downloadable electronic publications in the area of electronics, semiconductors and integrated electronic apparatus and devices, computers, telecommunications, entertainment, telephony, and wired and wireless telecommunications; computer hardware for use in machine vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms and data analysis; Computer software for machine learning, data query, and data analysis; computer software for cognitive computing, deep learning, artificial intelligence; computer software platform for cognitive computing; computer software for graphical representation of data; pattern recognition computer software; computer software for data mining; computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; computer software development kits; computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; downloadable and recorded vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; computer hardware and software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing sound, images, graphics, and data; algorithm software programs for the operation and control of computers; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of audio and video graphics information; downloadable and recorded computer software for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data for use in fixed, mobile and handheld devices; electronic database featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information recorded on computer media; navigation software for calculating and displaying routes; public transit navigation system featuring interactive digital map displays, interactive instructions and user generated information; interactive social computer software for the retrieval and display of public transit, navigation, geographic, map and travel information; interactive social computer software to enable the transmission of public transit information, mapping, navigation, traffic, routes and point-of-interest information to telecommunication networks, cellular phones, navigation devices and other mobile and hand-held devices; interactive social computer software that enables the exchange of information among users; computers and computer operated systems for autonomous driving, driver-assisted, connected vehicles, unmanned aerial devices, and drones; computer hardware and software platforms featuring interactive displays, control systems, and control devices, warning systems, connectivity, onboard computers, and GPS for vehicles, connected vehicles, autonomous, and driverless vehicles; multi camera systems for use in vehicles; GPS navigation and guidance, GPS location tracking, GPS map-displaying and route-calculating device, video-recording, and wireless communication network devices for data or image transmission for vehicles; computer software applications for digital virtual agents, predictive systems, machine learning, cognitive process automation, pattern recognition, character recognition, visual computing applications, knowledge virtualisation, robotics, drones, and unmanned vehicles; computer software and hardware applications for automatic vehicle driving control; computer software and hardware applications for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles; Vehicle tracking devices comprised of computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking and vehicle monitoring

 

Class 042:       Providing temporary use of on-line non-downloadable software for machine learning, data mining, data query, and data analysis; providing temporary use of on-line non-downloadable software for cognitive computing, deep learning, artificial intelligence; providing temporary use of non-downloadable software for data query and data analysis; providing temporary use of non-downloadable software for data mining; providing temporary use of non-downloadable software for cognitive computing, deep learning, artificial intelligence; searching and retrieving information on computer networks for others; computer services, namely, providing temporary use of online non-downloadable software, software application programming interface (API), and software widget for machine learning, data mining, data query, and data analysis; providing online non-downloadable computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; providing online non-downloadable computer software development kits; providing online non-downloadable computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; providing online non-downloadable vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; software as a service (SAAS) services featuring software for use in providing cloud-computing capabilities and information technology (IT) services, computing, and cloud computing; software as a service (SAAS) services featuring software for use in computing via a global and local network; software as a services (SAAS) services feature software development platform for use in connecting applications to enterprise systems and devices; software consulting and providing information on software as service; software as a service (SAAS) services featuring software for use in providing low-latency and high bandwidth computing; computer software services for providing computing capabilities for application developers and content providers; cloud computing featuring software for use in providing low-latency and high bandwidth computing, information technology (IT) services, and computing via a global and local network; computer software services for providing cloud computing capabilities for application developers and content providers; services for enabling applications to be deployed across an online network; services for providing analytics, caching, computation and traffic routing; services for providing a secure and trusted computing network; providing computer hardware and software consulting services in the field developing a cloud based environment with integration of applications across various platforms and connected devices; computer services, namely, creating computer network-based indexes of information, websites, and resources; providing temporary use of non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); providing online non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); software as a service (SAAS); consulting services in the field of computers and wireless computing; computer network management services, namely, monitoring of network systems for technical purposes; hosting of digital content on the internet; computer network monitoring services, namely, providing information on the operation of computer networks; customization of web software, and computer user interface design for others; Development, design, and consulting services for computers; designing and developing standards for others in the design and implementation of computer software, computer hardware and telecommunications equipment; providing customers and technicians with information relating to computer project management; providing online software as a service for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data; providing online non-downloadable software featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information; providing online non-downloadable navigation software for calculating and displaying routes and sharing public transit navigation system, map and travel information; Providing online non-downloadable computer software to enable the sharing of public transit information, mapping, navigation, traffic, routes and point-of-interest information; interactive social computer software that enables the exchange of information among users; providing online software as a service for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles

 

The wording that is underlined in the identification of goods and services, above, is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant must specify the common commercial or generic name for the apparatus, instruments, and devices and the nature of the downloadable electronic publications.  Applicant must also list the parts and components of the systems, using common generic terms and referencing the primary components first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  In addition, applicant specify the function or purpose of the software and software services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

The wording that is italicized in the identification of goods and services, above, must be clarified because it is too broad and could include goods and/or services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, workstations primarily comprised of furniture are properly classified in International Class 020, and routers in the nature of power tools are properly classified in International Class 007.  In addition, the identification for software and software services must be amended to clarify whether its 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).   Further, the identifications for systems must be classified in the same international class as the primary parts or components of the systems.  See TMEP §1401.05(d).  Finally, computer hardware consulting encompasses consulting in the field of computer hardware repair, which is properly classified in International Class 037.  

 

Applicant may adopt any or all of the following identification, if accurate.  Applicant must also adopt the appropriate international class number(s), and, if applicant adopts goods and/or services in more than one class, it must comply with the multiple class application requirements set forth below.  In the following, proposed amendments are in bold.  Where the amendments include brackets, applicant must remove the brackets and incorporate the bracketed information into the amended identification.

 

            Class 007:       Power tools, namely, routers

 

Class 009:       Computers; handheld computers; microcomputers; minicomputers; memory boards; personal digital assistants; portable and handheld electronic personal organizers; computer hardware; integrated circuits; computer memory hardware in the nature of integrated circuit memories; integrated circuit chips, namely, electronic chips for the manufacture of integrated circuits; semiconductor chip-sets; data processors in the nature of semiconductor processors; semiconductor processor chips; semiconductor chips; microprocessors; printed circuit boards; electronic circuit boards; computer motherboards; computer memories; downloadable computer operating systems software; micro-controllers; data processors; central processing units; semiconductor memory devices; software programmable microprocessors; digital and optical microprocessors; digital and optical data and signal processors; video circuit boards; audio circuit boards; audio-video circuit boards; video graphic accelerators; multimedia accelerator boards; video processors; video processor circuit boards; computer hardware in the nature of processor die packaging and casings; cards, discs, tapes, wires, records, microchips and electronic circuits, all for the recordal and transmission of data; modems; apparatus and instruments, all for processing, storage, retrieval, transmission, display, input, output, compressing, decompressing, modifying, broadcasting and printout of data, namely, {specify the nature of the apparatus and instruments, e.g., computer memory hardware, computer input devices, etc.}; computer hardware in the nature of computer input and output devices; computer work stations comprising {specify major computer hardware components}; data memories, namely, memories for data processing equipment; storage devices in the nature of external computer hard drives; security systems for computer hardware and software comprised of computer hardware and downloadable computer software for securing computer hardware and software; set electronic chips in the nature of electronic chips for the manufacture of integrated circuits; computer hardware in the nature of components for computers and printed circuits; computer hardware, namely, voice accelerators; computer hardware, namely, voice, data, image and video accelerators; flash memories and flash memory devices in the nature of blank flash memory cards;memory systems for computers comprised of computer memories; electric cables and electrical adapters; computer terminals and document printers for use therewith; video display cards and monitors; telecommunications apparatus and instruments, namely, {specify the nature of the apparatus and instruments, e.g., microphones, fuses, pickups, etc.}; cameras; computer hardware for computing; computer hardware for computing via a global and local network; computer hardware for cloud-computing; computer hardware for low-latency and high bandwidth computing; computer hardware for use in providing a secure computing environment; computer networking hardware; computer communication servers; computer hardware for use in providing a secure cloud computing network; downloadable computer software for computing; downloadable computer software for cloud computing; downloadable computer software for computing via a global and local network; downloadable computer software for low-latency and high bandwidth computing; computer memory hardware; downloadable computer software for providing a secure computing network; downloadable computer software for use in providing a secure cloud computing network; downloadable computer operating system software; computer system extensions, tools and utilities in the nature of downloadable application software for connecting personal computers, networks, telecommunications apparatus and global computer network applications; computer hardware and downloadable computer software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of data; computer network adapters; electronic computer network controllers; computer network interface devices; computer network hubs, switches, and routers; microcontrollers for internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing mobile internet of things (IoT) enabled mobile devices; computer hardware and downloadable computer software for the development, maintenance, and use of local and wide area computer networks; computer hardware and downloadable computer software for the development, maintenance, and use of interactive audio-video computer conference systems; computer hardware and downloadable software for the receipt, display, and use of broadcast video, audio, and digital data signals; electronic control devices for the interface and control of computers and global computer and telecommunications networks with television and cable broadcasts and equipment; computer network routers; computer network hubs; computer servers; computer switches; apparatus for testing and electronic programming devices for integrated circuits; computer hardware in the nature of peripheral memory apparatus and devices; computer networking hardware; semiconductor devices; computer hardware and downloadable computer software for creating, facilitating, and managing remote access to and communication with local area networks (lans), virtual private networks (vpn), wide area networks (wans) and global computer networks; downloadable computer network router, switch, hub and server operating software; downloadable computer software tools for the facilitation of third party software applications; computer hardware and downloadable computer software for wireless network communications; downloadable electronic publications in the nature of {specify the nature of the publications, e.g., articles, journals, newsletters, etc.} in the area of electronics, semiconductors and integrated electronic apparatus and devices, computers, telecommunications, entertainment, telephony, and wired and wireless telecommunications; computer hardware for use in machine vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms and data analysis; Downloadable computer software for machine learning, data query, and data analysis; downloadable computer software for cognitive computing, deep learning, artificial intelligence; downloadable computer software platform for cognitive computing; downloadable computer software for graphical representation of data; downloadable pattern recognition computer software; downloadable computer software for data mining; downloadable computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; downloadable computer software development kits; downloadable computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; downloadable and recorded vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; computer hardware and downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing sound, images, graphics, and data; downloadable algorithm software programs for the operation and control of computers; computer hardware and downloadable computer software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of audio and video graphics information; downloadable and recorded computer software for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data for use in fixed, mobile and handheld devices; electronic database featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information recorded on computer media; downloadable navigation software for calculating and displaying routes; public transit navigation system comprised of computer hardware and downloadable computer software for interactive digital map displays, interactive instructions and user generated information; downloadable interactive social computer software for the retrieval and display of public transit, navigation, geographic, map and travel information; downloadable interactive social computer software to enable the transmission of public transit information, mapping, navigation, traffic, routes and point-of-interest information to telecommunication networks, cellular phones, navigation devices and other mobile and hand-held devices; downloadable interactive social computer software that enables the exchange of information among users; computers and downloadable computer operating system software for autonomous driving, driver-assisted, connected vehicles, unmanned aerial devices, and drones; computer hardware and downloadable computer software platforms featuring interactive displays, control systems, and control devices, warning systems, connectivity, onboard computers, and GPS for vehicles, connected vehicles, autonomous, and driverless vehicles; multi camera systems for use in vehicles comprised of video cameras and computers; satellite navigational system in the nature of a global positioning system for navigation and navigation guidance, GPS location tracking devices, GPS map-displaying and route-calculating device, video recorders, and wireless communication network devices for data or image transmission for vehicles; downloadable computer software applications for digital virtual agents, predictive systems, machine learning, cognitive process automation, pattern recognition, character recognition, visual computing applications, knowledge virtualization, robotics, drones, and unmanned vehicles; downloadable computer software applications and computer hardware for automatic vehicle driving control; downloadable computer software applications and computer hardware for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles; Vehicle tracking devices comprised of downloadable computer software and computer hardware, electric or electronic sensors, satellite transmitters, audiovisual receivers and global positioning satellite receivers, all for use in connection with vehicle tracking and vehicle monitoring

 

Class 020:       work stations having multi-use work surfaces for use in a wide variety of fields

 

Class 037:       consulting services in the field of computers, namely, consultation about the repair of computer hardware; consulting services for computers, namely, consultation about the repair of computer hardware

 

Class 042:       Providing temporary use of on-line non-downloadable software for machine learning, data mining, data query, and data analysis; providing temporary use of on-line non-downloadable software for cognitive computing, deep learning, artificial intelligence; providing temporary use of non-downloadable software for data query and data analysis; providing temporary use of non-downloadable software for data mining; providing temporary use of non-downloadable software for cognitive computing, deep learning, artificial intelligence; searching and retrieving information on computer networks for others; computer services, namely, providing temporary use of online non-downloadable software, software application programming interface (API) software, and software in the nature of a widget for machine learning, data mining, data query, and data analysis; providing online non-downloadable computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; providing online non-downloadable computer software development kits; providing online non-downloadable computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; providing online non-downloadable vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; software as a service (SAAS) services featuring software for use in providing cloud-computing capabilities and information technology (IT) services, computing, and cloud computing; software as a service (SAAS) services featuring software for use in computing via a global and local network; software as a services (SAAS) services featuring software development platform for use in connecting applications to enterprise systems and devices; software consulting and providing information on software as service; software as a service (SAAS) services featuring software for use in providing low-latency and high bandwidth computing; computer software services in the nature of providing temporary use of online non-downloadable software for providing computing capabilities for application developers and content providers; cloud computing featuring software for use in providing low-latency and high bandwidth computing, information technology (IT) services, and computing via a global and local network; computer software services in the nature of providing temporary use of online non-downloadable software for providing cloud computing capabilities for application developers and content providers; services for enabling applications to be deployed across an online network, namely, deployment of wireless communication networks for others; services for providing computer systems analytics, caching in the nature of electronic data storage, computation in the nature of computer systems analysis and traffic routing in the nature of monitoring Internet traffic control of the websites of others; services for providing a secure and trusted computing network, namely, computer network configuration services; information technology consulting services, namely, providing computer hardware and software consulting services in the field developing a cloud based environment with integration of applications across various platforms and connected devices; computer services, namely, creating computer network-based indexes of information, websites, and resources; providing temporary use of non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); providing online non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); software as a service (SAAS) services featuring software for {specify the function of the software and, if it is content- or field-specific, the content or field of use; information technology consulting services in the field of computers and wireless computing; computer network management services, namely, monitoring of network systems for technical purposes; hosting of digital content on the internet; computer network monitoring services, namely, providing information on the operation of computer networks; customization of web software, and computer hardware, namely user interface, design for others; Development and design of computer hardware; designing and developing standards for others in the design and implementation of computer software, computer hardware and telecommunications equipment; providing customers and technicians with information relating to computer project management; providing online software as a service services featuring software for for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data; providing online non-downloadable software featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information; providing online non-downloadable navigation software for calculating and displaying routes and sharing public transit navigation system, map and travel information; Providing online non-downloadable computer software to enable the sharing of public transit information, mapping, navigation, traffic, routes and point-of-interest information; providing temporary use of online non-downloadable interactive social computer software that enables the exchange of information among users; providing online software as a service services featuring software for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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).

 

Multiple-Class Application Requirements

 

The application identifies goods and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 2 classes.  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.

 

Applicant must also respond to the following requirement and should note the advisory set forth below.

 

Foreign Registration Required

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  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.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an 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 the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  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).

 

Applicant should note the following advisory.

 

Advisory Regarding Section 44(e)

 

Applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin.  15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05.  “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled.  15 U.S.C. §1126(c); TMEP §1002.04-.05.

 

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:

 

(1)       A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq.  If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01; and

 

(2)       A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.

 

If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Response to Office Action Required to Avoid Abandonment

 

Applicant may email the assigned trademark examining attorney with questions about this Office action.  The examining attorney cannot provide legal advice, but the examining attorney can provide additional explanation about the requirements and advisory 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. 

 

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

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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.  

 

• 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 October 22, 2020 for

U.S. Trademark Application Serial No. 90041533

 

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. 

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 October 22, 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.”