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:  February 20, 2021

 

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.

 

SUMMARY OF ISSUES:

 

• Identification of goods for International Class 9
• Disclaimer

 

NO CONFLICTING 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.

 

IDENTIFICATION OF GOODS FOR INTERNATIONAL CLASS 9:

 

The identification of good for International Class 9 is not acceptable because wording is indefinite and the goods must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Suggested amendments are highlighted below.  Applicant may adopt the following wording, if accurate: 

 

Computer peripherals and parts thereof; computer and laptop computer peripherals and accessories, namely, computer mice, trackballs, mouse pads, arm and wrist rests, keypads, keyboards, keyboard covers, headphones, headsets, protective covers, protective cases, protective sleeves, carrying cases, bags, backpacks especially adapted for holding laptops and notebook computers, power adapters, cables, cable connectors, styluses, battery chargers, screen protectors comprised of tempered glass adapted for use with portable electronic devices, protective films adapted for computer screens, screen filters, stands, memory devices, storage devices, blank hard drives, blank flash drives, blank disk drives, stands adapted for computers and laptops, mounts, and cooling pads; styluses for use with tablet computers and portable electronic devices; carrying cases, holders, protective cases and stands adapted for use with handheld digital electronic devices; surge protectors; USB hubs; USB cables; ethernet adapters; ethernet cables; protective optical blue light blocking glasses; blank digital storage media; blank electronic storage media; batteries; battery chargers; mobile telephone and portable electronic device accessories, namely, chargers, electric charging cables, battery charging devices, wireless charging pads for smartphones, auxiliary cables for cell phones, USB cables, protective covers, cases, charging cases, straps, armbands, keyboards, headsets, headphones, screen protectors, holders, stands and mounts all specially adapted for use with handheld digital electronic devices, namely, cell phones; home theater, audio and video equipment accessories, namely, antennas, surge protectors, television mounts and mounting brackets, cables, connectors, adapters; audio and video interconnect cables, high definition multimedia interface cables, adapters and splitters; USB cables; power strips and circuit overload protection devices, namely, voltage surge protectors; speaker cables; electrical cables, electrical adapters, and electrical audio and video switches; electrical audio-visual equipment cables and connectors; electrical and power cables; video cables; audio cables; extension cables; electric connectors; cable connectors; plug connectors; electric power converters; optical cables; networking cables, namely, telecommunication cables, in International Class 9.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

DISCLAIMER:

 

Applicant must disclaim the wording “ESSENTIALS” because it is merely descriptive of a feature of the applicant’s goods, which are essentials or very necessary items.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term ESSENTIALS is the plural of essential which refers to absolutely necessary; extremely important.  See attached definition.

 

Thus, the wording merely describes a feature of the applicant’s goods, which are essentials or very necessary items. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ESSENTIALS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE:

 

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. 

 

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

 

 

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

571-272-9291

marlene.bell@uspto.gov (for informal inquiries)

 

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 February 20, 2021 for

U.S. Trademark Application Serial No. 90266369

 

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. 

 

 

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

571-272-9291

marlene.bell@uspto.gov (for informal inquiries)

 

 

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 February 20, 2021, 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.”