To: | LG ELECTRONICS INC. (mailroom@bskb.com) |
Subject: | U.S. Trademark Application Serial No. 90165439 - QNED - 0630-8610US1 |
Sent: | January 13, 2021 10:39:44 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90165439
Mark: QNED
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Correspondence Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 GATEHOUSE ROAD, SUITE 100 EAST
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Applicant: LG ELECTRONICS INC.
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Reference/Docket No. 0630-8610US1
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: January 13, 2021
SEARCH OF USPTO DATABASE OF MARKS
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is QNED for use with “Television sets; Displays for televisions; Display panels; TV monitors; Digital signage; Light Emitting Diode (LED) displays; Smartphones; Displays for smartphones; Mobile phones; Wearable smartphones; Digital set-top boxes; Computer application software; Computer application software for mobile phones; Computer application software for televisions; Tablet PCs; Monitors for computers; Computers; Portable computers; Chargeable batteries; Digital cameras; Head mounted video displays; Monitoring apparatus, electric” in International Class 9.
The attached evidence shows that QNED stands for “quantum nano-emitting diode,” a next generation display technology being explored by technology companies. See attached http://avantama.com/next-gen-display-tech-qd-oled-or-qned/, http://hdguru.com/samsung-moves-forward-with-qd-oled-qned-technologies/, and http://www.displaydaily.com/article/display-daily/are-quantum-nano-emitting-diodes-qneds-the-next-big-thing. The evidence shows that the mark QNED merely describes the display technology that will be featured in the identified goods.
Because applicant’s mark is merely descriptive of the goods, registration is refused under Section 2(e)(1) of the Trademark Act.
Response to Section 2(e)(1) Refusal
Advisory – Supplemental Register Not Available Until Filing of Acceptable Amendment to Allege Use
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
The wording “monitoring apparatus, electric” in the identification of goods is indefinite and must be clarified because the particular type of apparatus must be identified by its common commercial name. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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).
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 9 –
Television sets; Displays for televisions; Display panels, namely, [specify type or use, e.g., digital signage display panels, OLED display screens, plasma display panels, etc.]; TV monitors; Digital signage; Light Emitting Diode (LED) displays; Smartphones; Displays for smartphones; Mobile phones; Wearable smartphones; Digital set-top boxes; [specify format, e.g., recorded, downloadable] computer application software for [specify function, e.g., database management, etc.]; [specify format, e.g., recorded, downloadable] computer application software for mobile phones for [specify function, e.g., database management, etc.]; [specify format, e.g., recorded, downloadable] computer application software for televisions for [specify function, e.g., database management, etc.]; Tablet PCs; Monitors for computers; Computers; Portable computers; Chargeable batteries; Digital cameras; Head mounted video displays; Monitoring apparatus, electric, namely, [specify nature of the goods, e.g., digital cameras, etc.]
Class 42 –
Providing online non-downloadable computer application software for [specify function, e.g., database management, etc.]
Amendment Guidelines
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.
REQUIREMENT – SPECIFY NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods that may be classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. 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 fee for adding classes to a TEAS Standard application is $350 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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).
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Sections 1(b) and 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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
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, an 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.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
ADVISORY – FOREIGN APPLICATION NOT FROM APPLICANT’S COUNTRY OF ORIGIN
In the present case, the U.S. application shows that applicant has a domicile in South Korea, but the foreign application was filed in Trinidad and Tobago.
Because applicant’s domicile is in a country different from the country in which the foreign application was filed, and from which the foreign registration will issue, applicant will need to establish that this country is applicant’s country of origin as of the date of issuance of the foreign registration. See 15 U.S.C. §1126(c); TMEP §§1002.02, 1002.04. This requirement may be satisfied by providing the following written statement for the record, once the foreign registration issues: “Applicant has had a bona fide and effective industrial or commercial establishment in Trinidad and Tobago as of the date of issuance of the foreign registration.” TMEP §1002.04.
If applicant will not be able to assert that the country in which the foreign registration has issued is applicant’s country of origin, registration under Section 44(e) will be refused. See 15 U.S.C. §1126(c); TMEP §1002.01-.02. In that case, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as a basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04. However, applicant may still retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
RESPONSE GUIDELINES
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.
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.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE