Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 8/23/2012

Registration Number  2962731

The Sections 8 & 15 Combined Affidavit submitted on December 9, 2011, cannot be accepted or acknowledged for the reasons set forth below.

Goods/Services Issue class 9

The owner must submit a statement that clarifies the goods and/or services in the registration on or in connection with which the mark is in use in commerce and has been in continuous use in commerce for five consecutive years.  15 U.S.C. §§1058(b), 1065; 37 C.F.R. §§2.161(e)(1), 2.167(c); TMEP §§1604.09(a), (c), 1605.04.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

The owner must submit a statement that clarifies the goods and/or services in the registration on or in connection with which the mark is in use in commerce and has been in continuous use in commerce for five consecutive years.  15 U.S.C. §§1058(b), 1065; 37 C.F.R. §§2.161(e)(1), 2.167(c); TMEP §§1604.09(a), (c), 1605.04.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

The Combined Affidavit identifies the following goods in bold to delete “Electrical distribution boxes for connecting power, data and communication lines; electrical controllers for use with commercial and residential heaters, air conditioners and refrigeration units for the purpose of reducing energy usage by modifying the burner and compressor patterns; electrical controllers for automatic process control and manufacturing lines, namely, control of temperature, pressure, level, flow, pH value and machine speed furnaces, distillation columns, reactors, boilers, evaporators, heat exchangers, extruders, electrical drives, HVAC systems, and turbines for use in process and manufacturing industries; electrical controllers for controlling operation of elevator doors; electrical controllers for outdoor lighting; electrical controllers for clutches; electrical controllers for construction machines; computer hardware and computer programs for use in controlling power supply devices in the electrical power industry; pre-recorded video discs and tapes featuring introduction, explanation and instruction for using apparatus, equipment, computer hardware and computer software programs in the field of electrical power,”

The remaining goods are “electrical distribution boxes for connecting power, data and communication lines; electrical controllers for automatic process control and manufacturing lines” The words underline would be broader in scope of the identification  than those listed in the registration.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

/MACY MA/

MACY MA

Trademark Specialist

Post Registration

Tel 571-272-9538

Fax 571-273-9538

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.htm.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant.  If a registrant is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.