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:  June 09, 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
• Multi-Class Requirements

 

SEARCH OF USPTO 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.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

As shown in the amended identification of goods below, certain wording in the identification is indefinite and must be clarified for the reasons stated parenthetically or immediately below, or if no such reasons are given then because the wording as submitted fails to sufficiently identify those goods under the Office’s standards for identifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  See TMEP §1402.01.

 

If applicant has any questions about any of the suggested wording, below, such as if this suggested wording is inaccurate or incomplete, then applicant is encouraged to contact the undersigned for a more detailed explanation or to discuss alternative amendments.

 

A number of the wording in the identification of goods is indefinite and must be clarified because the exact nature of the goods is not made clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Such specificity of identifications provides public notice and enables the USPTO to reach informed judgments concerning likelihood of confusion under the Trademark Act.   Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant must also clarify the wording “radio alarm clocks” in the identification of goods in International Class 09 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “Radios incorporating clocks” are in International Class 09 and “Clocks incorporating radios” are in International Class 14. 

 

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Finally, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 09:  Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; {specify type, e.g., loud} speakers; car speakers; monitor speakers; audio speakers; portable speakers; personal speakers; soundbar speakers; smart speakers; speakers for computers; wireless audio speakers; pairable wireless speakers; mobile phone speakers; speakers for record players; audio speakers for home; audio speakers for vehicles; speakers for video conferencing; electronic audio signal processors for compensating sound distortion in speakers; amplifiers; amplifying tubes; amplifying valves; audio- and video-receivers; audio interfaces; audio mixers; cassette players; compact disc players; equalisers being audio apparatus; juke boxes, musical; loudspeakers; personal stereos; portable media players; sound recording carriers, namely, recording devices for sound carriers; sound reproduction apparatus; sound transmitting apparatus; subwoofers; audio devices, namely, specify Class 09 type of audio device, e.g., audio interfaces} and radio receivers; digital audio interface apparatus; digital video servers; digital video players; digital audio servers; car audio apparatus, namely, specify Class 09 type of audio device, e.g., car audio speakers}; auxiliary speakers for mobile phones; automobile stereo adapters; audio time delay units; car radios; car stereos; carrying cases for portable music players; carrying cases for digital music players; digital music players; digital sound processors; digital voice recorders; speakers being audio equipment; speakers for portable media players; transmitting and receiving apparatus for radio broadcasting; vehicle radios; vehicle stereos; wireless speakers; stereo amplifying apparatus; digital sound processors [duplicate entry delete]; solar powered radios; sound amplifying receivers; signal processors for audio speakers; single-channel radio communication apparatus for fixed stations; radios for vehicles; radios; radio-frequency receivers; radio signal tuners; radio receiving tuners; radio receivers and transmitters; radio monitors for reproduction of sound and signals; radio direction finders; radio cassette tape recorders; radio alarm clocks, namely, radios incorporating clocks and alarms; portable sound reproducing apparatus; portable sound recording apparatus; portable radios; portable music players; mobile radio receiving apparatus, namely, radio receivers; MP3 players; loudspeakers with built in amplifiers; loudspeaker units, namely, {specify the common commercial name of the loudspeaker units, e.g., loudspeaker cabinets, etc.}; loudspeaker systems; stands adapted for loudspeakers; loudspeaker drive units, namely, {specify the common commercial name of the loudspeaker drive units, e.g., electroacoustic transducers, etc.}; loudspeaker cables; high fidelity audio apparatus, namely, {specify the common commercial name, e.g., headphones, etc.}; high fidelity apparatus, namely, {specify the common commercial name}; carrying cases for radios; microphones; DAB radios; computer hardware; downloadable computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; mobile apps in the nature of downloadable computer application software for mobile phones, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; data processing equipment; structural parts and fittings for all the aforesaid goods

 

International Class 14:  radio alarm clocks, namely, clocks incorporating radios and alarms

 

Applicant should note that the above bolded language indicate the examining attorney’s suggestions, and the braces indicate where applicant must insert specific types of goods.  The braces should not appear in the amended identification; only the specific goods indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified by bold font.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class(es) 09; and applicant needs a specimen for class 14 if added.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

ASSISTANCE

 

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.    

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 128

(571) 272-6786

Salima.Oestreicher@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 June 09, 2021 for

U.S. Trademark Application Serial No. 90373788

 

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. 

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 128

(571) 272-6786

Salima.Oestreicher@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 June 09, 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.”