Offc Action Outgoing

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.

ISSUE/MAILING DATE:

THIS IS A FINAL ACTION.

This Office action is in response to applicant’s communication filed on October 19, 2012.

The drawing requirement has been satisfied. TMEP §§713.02, 714.04.

However, the following requirements are now made FINAL for the reasons set forth below: (1) identification / classification of goods; and (2) mark description. 37 C.F.R. §2.64(a).

FINAL Requirement – Identification / Classification of Goods

All identifications must be precise and identify the goods with particularity using common or commercial names for the goods. TMEP §1402.01. The goods must also be accurately classified. This requirement is now made FINAL.

Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):

International Class 011: Shape Memory Alloy (SMA) apparatuses that provide environmental control namely for HVAC vents.

The identification is unacceptable as presently worded because certain goods are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).

Specifically, the nature of the environmental control is unclear: how is the environmental control provided? Are these electronic controlling devices in the nature of remote controllers? Are they vent covers for HVAC ducts? How the goods provide the environmental control is essential to determining the correct classifications. The term “apparatuses” is indefinite. Applicant had previously listed these goods as devices, which the examining attorney indicated was too vague a term as it could include many different items with multiple purposes. The term “apparatuses” is no less vague and overly inclusive.

Finally, if the goods are HVAC vent covers (as shown in the specimen), then they may be classified in one of two international classes: if the material content is metal, then they belong in class six; if the material content is not metal, then they belong in class 19.

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

Suggested Amendments

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {}):

International Class 006: Primarily metal Shape Memory Alloy (SMA) HVAC vent covers.

International Class 011: Shape Memory Alloy (SMA) apparatuses that provide environmental control for HVAC vents, namely, {specify how the apparatuses work or what elements comprise the goods, e.g., dampers in the nature of control devices used in air ducts to regulate the flow of air}.

International Class 006: Non-metal Shape Memory Alloy (SMA) HVAC vent covers.

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Adding Classes

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

(1) LIST GOODS BY INTERNATIONAL CLASS: Applicant must list the goods by international class.

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods, applicant must also submit the following:

(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq.

(c) STATEMENT: The following statement: “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.”

(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods, the specimen of record is acceptable for International Class 006 or 019 only, depending on the material content of the goods shown in the specimen. Applicant must submit additional specimens if different international classes are added to the application.

This requirement is now made FINAL.

FINAL Requirement – Mark Description

The drawing shows the applied-for mark in various colors, including white. Although the application includes a claim of color and a mark description referencing color, the color white is not included in either the color claim or description. The color claim and mark description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether white is being claimed as color and/or is intended to indicate background, outlining, shading and/or transparent areas. TMEP §807.07(d).

To clarify whether white is being claimed as color, applicant must satisfy one of the following:

(1) If white IS being claimed as a feature of the mark, applicant must amend the color claim to include white, and amend the mark description to identify the literal and design elements that includes white and specify where the white appears in these elements; or

(2) If white IS NOT being claimed as a feature of the mark, applicant must provide a statement that the white represents background, outlining, shading and/or transparent areas and is not part of the mark.

Id.

The following mark description is suggested, if accurate (and assumes that the white areas ARE NOT a feature of the mark:

The mark consists of a depiction of a house wherein the lines of the house are in green. A green leaf with a light green stem appears above the chimney. Black and gray lines appear under the roof, bottom and left side for shading. Within the walls of the house appears a blue line above a red line, both ending in an arrow, and these lines curve to form a circle. The background, including the interior of the house and the chimney, are transparent.

This requirement is now made FINAL.

Response Instructions

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below. Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.

/Andrea R Hack/

Andrea R. Hack

Trademark Examining Attorney

Law Office 108

571-272-5413 (phone)

571-272-5412 (fax)

Andrea.hack@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. 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.