Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/633485

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

REFUSAL BECAUSE A SEARCH OF THE OFFICE RECORDS REVEALED A CONFUSINGLY SIMILAR REGISTERED MARK

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1,036,621 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services.  TMEP §§1207.01 et seq. 

 

Applicant’s mark, AMI, is confusingly similar to registrant’s mark, AMI 1.  They share the salient feature AMI.  Applicant’ s goods, welding machines and part therefore, are closely related to registrant’s goods, assembly machines.  Attached are registrations for marks, which are used to identify welding machines and assembly machines.

 

IDENTIFICATION OF GOODS

 

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.gov.uspto.report/netahtml/tidm.html.

 

The identification of goods must be amended because certain goods belong in other than Class 7, and because certain goods must be more clearly identified.  TMEP Section 1402.01.  Amendment of the identification is required.

 

Welding machines and attachments for welding machines (e.g., welding heads; clamps for holding pieces on welding tables) are in Class 7. However, welding torches and torch manipulators, electrodes and electrode holders and extenders, cameras, software, goods which measure or electrically/electronically control, align or inspect, protective equipment {e.g., welding helmets}, and welding power supplies are in Class 9. Electric cable is in Class 9; non-electric cable is in Class 6. Hand tools {e.g., for cutting and facing pipes and tubes} are in Class 8. Also, clamps not for holding pieces during machining or welding are in Classes 6, 8 or 20. Welding cable is in Class 6.  The cooling units, if welding machine attachments, are in Class 7; and if welding torch attachments, are in Class 9.  If the cooling units are not attachments, they are in Class 11.  Printed welder training manuals are in Class 16. 

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” “assemblies,” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  The applicant may amend “camera assemblies” to “cameras.”

 

 

In addition to the above, the following wording must be clarified:

 

“Weld puddle viewing equipment”; “Welding data collection devices”; “Welding machine control pendants”; “Welding machine interface devices”; “Purge mandrel tools”; “Fitting support mandrels”; “Weld head alignment fixtures”; “Weld shielding devices”; “Weld viewing equipment”; “Consumable weld filler products”; “Consumable welding torch parts”

 

The identification of goods must be amended not only to re-classify goods but also to make clear, by virtue of the identification, that the goods are properly classified.  Thus, for example, hand tools should be identified as “hand tools, namely ____ {name tools}”; and controls as “electrical (or electronic or automatic} controls for ____ {name use/function}.”

 

The following wording in the identification of goods is unacceptable as indefinite because it is too general and may be classified in different classes.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804.  Acceptable terms are in brackets.

 

PARTS OF AND ACCESSORIES FOR THE FOREGOING, NAMELY,

PIPE WELDING HEADS [welding heads for {specify} and classify accordingly], TUBE WELDING HEADS [welding heads for {specify} and classify accordingly], FITTING WELDING HEADS [welding heads for {specify} and classify accordingly], TUBE-TO-TUBESHEET WELDING HEADS [welding heads for {specify} and classify accordingly], NARROW-GAP WELDING HEADS [welding heads for {specify} and classify accordingly], SEAM WELDING HEADS, WELD CLADDING HEADS [welding heads for {specify} and classify accordingly], WELDING TORCHES [Class 9], WELD CLADDING TORCHES, WELDING TORCH MANIPULATORS, WELDING TORCH HOLDERS [Class 9], ELECTRODE HOLDERS [Class 9], ELECTRODE EXTENDERS, TUNGSTEN ELECTRODES [Class 9], TUNGSTEN ALLOY ELECTRODES, WELD OBSERVATION VIDEO CAMERA ASSEMBLIES, WELD PUDDLE VIEWING EQUIPMENT, WELDING MACHINE PROGRAMMING SOFTWARE [Class 9], WELDING MACHINE CONTROL SOFTWARE [Class 9], WELDING DATA COLLECTION DEVICES, WELDING DATA COLLECTION SOFTWARE [Class 9], PIPE CLAMP INSERTS, TUBE CLAMP INSERTS, WELDING HEAD GUIDE RINGS, WELDING WIRE FEEDERS [Class 9], WELDING WIRE MANIPULATORS, WELDING MACHINE COOLING UNITS, WELDING TORCH COOLING UNITS, WELDING EQUIPMENT CABLES [electrical welding cables are acceptable in Class 9], WELDING EQUIPMENT EXTENSION CABLES [electrical welding extension cable are acceptable in Class 9], WELDING MACHINE CONTROL PENDANTS, WELDING MACHINE INTERFACE DEVICES, PURGE MANDREL TOOLS [Metal mandrels for {indicate use} are acceptable in Class 6], TUBE ALIGNMENT GAUGES [alignment gauges for {specify] are in Class 9], FITTING SUPPORT MANDRELS [Metal mandrels for {indicate use} are acceptable in Class 6], WELD HEAD ALIGNMENT FIXTURES, WELD SHIELDING DEVICES, WELD VIEWING EQUIPMENT, AND PARTS AND ACCESSORIES THEREOF; PIPE CUTTING AND FACING EQUIPMENT, TUBE CUTTING AND FACING EQUIPMENT, WELD INSPECTION EQUIPMENT AND PARTS AND ACCESSORIES THEREOF; WELDER TRAINING MANUALS [Educational publications, namely, training manuals in the field of {indicate subject matter} are acceptable in Class 16, WELDER PROTECTIVE EQUIPMENT. CONSUMABLE WELD FILLER PRODUCTS, CONSUMABLE WELDING TORCH PARTS, WELDING GAS CONTROL DEVICES; WELDING POWER SUPPLIES AND PARTS AND ACCESSORIES THEREOF AND THEREFOR

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    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)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a 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;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  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, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen(s) of record are acceptable for class(es) 7 and 9 only.

 

TRANSLATION

 

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.

 

 

 

 

 

/Robert Clark/

Robert Clark

Examining Attorney

Law Office 101

571-272-9144

fax: 571-273-9101

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.