Examiners Amendment

United States Patent and Trademark Office (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT

 

Issue date:  April 23, 2021

 

 

STATUS OF THE APPLICATION

 

This action proceeds the Office action dated December 15, 2020, where the trademark examining attorney refused registration based on the following:

 

1.      A Section 2(d) likelihood of confusion partial refusal with the mark in U.S. Registration No. 3702611;

 

2.      A requirement that applicant amend its indefinite identification of goods; and

 

3.      A requirement that applicant provide its domicile address.

 

On March 19, 2021, applicant submitted a response wherein:

 

1.      Applicant amended its identification;

 

2.      Applicant amended its domicile address; and

 

3.      Applicant argued against the likelihood of confusion.

 

The trademark examining attorney subsequently reached out to applicant to discuss this matter. Upon discussing this matter with applicant, the trademark examining attorney amends this application as described below. See Amendment section, infra.

 

On review of applicant’s response and the amendment below, the trademark examining attorney has determined the following:

 

1.      Applicant’s amended identification no longer creates a likelihood of confusion and thus this refusal is OBVIATED;

 

2.      Applicant’s amended identification is acceptable and thus this requirement is SATISFIED; and

 

3.      Applicant has amended its domicile address and thus this requirement is SATISFIED.

 

Accordingly, the trademark examining attorney is amending the application as described below. See TMEP §707.

 

AMENDMENT

 

Application has been amended as shown below.  As agreed to by Sean Ploen, applicant’s attorney, by email on April 16, 2021, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  Otherwise, no response is required.  Id.  In addition, applicant is advised that amendments to the goods are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods are not permitted.  37 C.F.R. §2.71(a).

 

Identification of Goods

 

The identification of goods is amended to read as follows (amended language in bold): 

 

Class 09:   Portable, customizable electronic device, namely, a handheld security testing device with onboard computer software development tools, open-source firmware, and an operating system reminiscent of a computer game, for use in interacting with and testing the security of other electronic devices by spoofing two-factor authentication, emitting and receiving infrared signals, storing access-control credentials, transmitting and receiving wireless signals, and scanning, analyzing and penetration-testing radio protocols, computer interfaces, USB ports, and computer hardware; computer hardware for detecting and identifying access to computer networks and resources, performing vulnerability scans, and penetration testing; all of the foregoing for use by IT security professionals, computer hardware and software engineers, and electronics hobbyists for testing the security of computers and computer networks, for learning electronics and software engineering, and for prototyping electronics and software

 

See TMEP §§1402.01, 1402.01(e).

NO RESPONSE REQUIRED

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney. Further, please advise the undersigned immediately of any objections to this examiner’s amendment. Otherwise, no response is necessary.

 

 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

571-272-6526

Hunter.Bayliss@USPTO.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 23, 2021 for

U.S. Trademark Application Serial No. 90121009

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

571-272-6526

Hunter.Bayliss@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).

 

 

 

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.”