UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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.

 

ISSUE/MAILING DATE: 11/26/2014

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 11, 2014.

 

In a previous Office action dated May 30, 2014, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce with any of the specified services under TMEP §§904, 904.07(a).  In addition, applicant was required to satisfy the following requirements:  amend the identification of services, and clarify the color claim and mark description.

 

Based on applicant’s response, the trademark examining attorney withdraws the failure-to-function refusal and color claim and description requirement.  See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of services.

 

IDENTIFICATION OF SERVICES

In the previous Office action, applicant was required to provide an acceptable identification of services.  The following wordings in applicant’s proposed identification amendment are still unacceptable because as written they are vague, confusing and/or overbroad: “REPAIR OF COMPUTER HARDWARE, NAMELY, … EMBEDDED PCS, … REISTIVE TOUCHscreen PANEL/PROJECTIVE CAPACITIVE TOUCHecreen PANEL”; “DISTRIBUTION SERVICE, namely, DELIVERY OF INDUSTIRLA PANEL PC, … EMBEDDED PCS, … RESISTIVE TOUCHscreen PANEL/PROJECTIVE CAPACITIVE TOUCHscreen PANEL” and “consulting services, namely, selection of design, testing and implementation of the goods/products that will be used in the following industustries: aerospace, commerce and finance, electrical and electronics, energy and utilities, food, drink and fast-food services, health-care and medical devices, manufacturing and processing, transportation and logistics, and engineering automotive.”  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification, if accurate:

 

Class 37: Repair of computer hardware, namely, of industrial panel PCs, human machine interface (HMI) controllers, embedded PCs, display monitors, resistive touchscreen panels, projective capacitive touchscreen panels, industrial data process control units, and printed circuit boards in International Class 37

 

Class 39: Distribution service, namely, delivery of industrial panel PCs, human machine interface (HMI) controllers, embedded PCs, display monitors, resistive touch touchscreen panels, projective capacitive touchscreen panels, industrial data process control units, and printed circuit boards in International Class 39

 

Class 42: Consulting services, namely, selection of design of __ [specify tangible item(s) or visual display(s), e.g., machinery, computer software] for use in the fields of aerospace, commerce and finance, electrical and electronics, energy and utilities, food, drink and fast-food services, health-care and medical devices, manufacturing and processing, transportation and logistics, and engineering automotive; product testing for use in the fields of aerospace, commerce and finance, electrical and electronics, energy and utilities, food, drink and fast-food services, health-care and medical devices, manufacturing and processing, transportation and logistics, and engineering automotive; implementation of software for others for use in the fields of aerospace, commerce and finance, electrical and electronics, energy and utilities, food, drink and fast-food services, health-care and medical devices, manufacturing and processing, transportation and logistics, and engineering automotive

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services.  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

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 at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04. 

 

Based on the above discussion, the requirement for an acceptable identification is therefore maintained and made FINAL.

 

RESPONSE TO PARTIAL REQUIREMENT

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  “REPAIR OF COMPUTER HARDWARE, NAMELY, … EMBEDDED PCS, … REISTIVE TOUCHscreen PANEL/PROJECTIVE CAPACITIVE TOUCHecreen PANEL”; “DISTRIBUTION SERVICE, namely, DELIVERY OF INDUSTIRLA PANEL PC, … EMBEDDED PCS, … RESISTIVE TOUCHscreen PANEL/PROJECTIVE CAPACITIVE TOUCHscreen PANEL” and “consulting services, namely, selection of design, testing and implementation of the goods/products that will be used in the following industustries: aerospace, commerce and finance, electrical and electronics, energy and utilities, food, drink and fast-food services, health-care and medical devices, manufacturing and processing, transportation and logistics, and engineering automotive.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following services: 

 

Repair of computer hardware, namely, of industrial panel PCs, human machine interface (HMI) controllers, display monitors, industrial data process control units, and printed circuit boards in International Class 37

 

Distribution service, namely, delivery of human machine interface (HMI) controllers, display monitors, industrial data process control units, and printed circuit boards in International Class 39

 

Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

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

 

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

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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 regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-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. §2.191; 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.

 

 

 

/Dawn Han/

Examining Attorney

Law Office 107

(571) 272-9432

dawn.han@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.