To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
`
`Apple Inc. (trademarkdocket@apple.com)
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`U.S. TRADEMARK APPLICATION NO. 87628828 - APPLE - N/A
`
`8/21/2018 11:04:00 AM
`
`ECOM107@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO.   87628828
`
`           
`
`MARK: APPLE
`
`CORRESPONDENT
`ADDRESS:
`  
`       THOMAS R. LA
`PERLE
`  
`       APPLE INC.
`         1 INFINITE LOOP
`           MS: 169-3IPL
`    
`    CUPERTINO, CA
`95014
`APPLICANT: Apple Inc.
`
`    
`
`*87628828*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:       
`
`  N/A
`CORRESPONDENT E-
`
`   
`
`MAIL ADDRESS:       
`
`trademarkdocket@apple.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 8/21/2018
`
`This letter is in response to the applicant’s communication received on June 22, 2018. In its response the applicant amended the filing basis to
`section 1(b) alone, which is accepted. However, the amended identification of goods is not accepted. The requirement for an acceptable
`identification of goods is maintained and continued.   The examining attorney notes the applicant’s response and removes the request for
`clarification of wireless communication devices, handheld digital electronic devices, biometric identification and authentication apparatus and
`covers and bags for class 9 goods. However, the applicant must note the following.
`
`Identification of Goods
`The identification for software in International Class 9 is indefinite and must be clarified by amending to specify the function of the software. 
`See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use. 
`See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software 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).
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`The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing
`bank accounts,” “desktop publishing software,” “tax preparation software.”
`
`The applicant should also note the following additional clarification required as indicated in bold.
`
`Applicant may adopt the following wording, if accurate:  
`
`Instruments, namely, wireless receivers in the form of jewelry, and speakers, microphones, and headsets for use with mobile phones; telephones;
`mobile telephones; smartphones; wireless communication devices for the transmission of voice, data, images, audio, video, and multimedia
`content; network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data,
`audio, image, and video files across networks; handheld digital electronic devices capable of providing access to the internet and for the sending,
`receiving, and storing telephone calls, electronic mail, and other digital data; wearable computer hardware in the nature of wearable computers
`and consumer electronic devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and
`storing of telephone calls, electronic mail, and other digital data; smartwatches; wearable activity trackers; electronic book readers; computer
`software, namely, a full line of computer software {the applicant specifies the field of use of the software but fails to specify the function.
`Applicant must indicate a function of the software} for business, home, education, entertainment, wellness, and developer use; computer
`software for collecting data for medical research; computer software for collecting, analyzing, and reporting data on physiological health;
`computer software for setting up, configuring, operating and controlling computers, computer peripherals, mobile devices, mobile telephones,
`smartwatches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theatre systems, and
`entertainment systems; application development software; computer game software; downloadable audio files and multimedia files featuring
`musical, video, and audio-video entertainment; computer peripheral devices; computer peripheral devices, namely, input devices for
`computers and handheld mobile digital electronic devices; peripheral devices for computers,{the language “peripheral devices for computers”
`identifies specific goods by common commercial name. However, the applicant must identify specific goods by common commercial
`name intended as peripheral devices for the following bolded language} mobile telephones, mobile electronic devices, wearable
`electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; wearable peripherals
`{the language   wearable computer peripherals identifies specific goods by common commercial name. However, the applicant must
`identify specific goods by common commercial name intended as peripheral devices for the following highlighted language}   for use with
`computers  mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top
`boxes, and audio and video players and recorders, mobile telephones, mobile electronic devices, smartwatches, earphones, headphones,
`set top boxes, and audio and video players and recorders; biometric identification and authentication apparatus; accelerometers; altimeters;
`distance measuring apparatus; distance recording apparatus; pedometers; monitors, display screens, virtual and augmented reality displays and
`controllers; optical goods, namely, optical disc drives, optical scanners, and optical readers; cameras; flashes for cameras; keyboards, mice,
`mouse pads, printers, disk drives, and hard drives; sound recording and reproducing apparatus; digital audio and video players and recorders;
`audio speakers; audio amplifiers and receivers; digital voice recorders and electronic voice recognition apparatus; earphones; headphones;
`microphones; set top boxes; radios; radio transmitters and receivers; global positioning systems (GPS devices); electric navigational instruments;
`electronic navigational and positioning apparatus and instruments; remote controls for controlling computers, mobile telephones, mobile
`electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, set top
`boxes, speakers, amplifiers, home theatre systems, and entertainment systems; wearable devices in the nature of {the applicant must specify
`the type of goods by common commercial name eg., headphones or wearable remote controls } for controlling computers, mobile
`telephones, mobile electronic devices, smart watches, earphones, headphones, audio and video players and recorders, televisions, set top boxes,
`speakers, amplifiers, home theatre systems, and entertainment systems; data storage apparatus in the nature of computer hardware, consumer
`electronic devices, computer hardware for data backup, computer memory hardware, mobile and wearable digital electronic devices for the
`storage of text, data, audio, image, and video files, set top boxes, and blank computer storage media; batteries; battery chargers; electrical and
`electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters for use with computers, mobile telephones,
`handheld computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones,
`headphones, audio and video players and recorders, and set top boxes; interactive touchscreens; interfaces for computers, computer screens,
`mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, televisions, set top boxes, and audio and video players
`and recorders; covers, bags, cases, sleeves, straps and lanyards for computers, mobile telephones, mobile electronic devices, wearable electronic
`devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; electronic agendas; dictating machines;
`measuring apparatus in the nature of {the applicant must specify the type of apparatus e.g., pressure measuring apparatus}; remote
`controls for computers, smartwatches, mobile phones, portable and handheld digital electronic devices, televisions, set top boxes, audio, video,
`and media players, game players, entertainment systems, home theater systems, video monitors, home appliances, and consumer electronic
`devices and displays
`
`An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods
`and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
`
`For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of
`Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`
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`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.   See TMEP §§705.02,
`709.06.
`
`    
`
`/Elizabeth N. Kajubi/
`Examining Attorney
`Law Office 107
`(571) 272-2727
`elizabeth.kajubi@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Apple Inc. (trademarkdocket@apple.com)
`
`U.S. TRADEMARK APPLICATION NO. 87628828 - APPLE - N/A
`
`8/21/2018 11:04:01 AM
`
`ECOM107@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 8/21/2018 FOR U.S. APPLICATION SERIAL NO. 87628828
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 8/21/2018 (or sooner if specified in the Office action).  A response
`transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
`response period.   For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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