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  78/819040

 

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

 

SEARCH RESULTS

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

IDENTIFICATION OF GOODS

 

The wording “components” in the identification of goods needs clarification because it fails to specify the common commercial name of the goods.  TMEP §1402.01.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," 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).   Relays, switches, controllers and indicators should be specified as being “electrical” for classification purposes.  The “rate indicator” must specify what type of rate is being measured unless the common commercial name “speed indicator” is used.

 

The wording “encoders and encoder accessories, namely…” must be separated into its components so that the common commercial name or the nature of the relationship between each of the goods preceding and following “namely” is clear, preferably by use of semi-colons between each discreet good in the identification. 

 

Applicant may substitute the following wording, if accurate:

 

“Electronic process automation control systems components, namely, [specify common commercial name; classification will be determined based upon the nature of the good, e.g., electric motors for machines with a digital servo drive controller in Class 7]” in an International Class to be determined; 

 

“Electronic process automation control systems components, namely, [specify common commercial name, e.g., signal conditioning and communication devices for industrial process control]; encoders, namely, absolute encoders, incremental encoders, motor mount encoders; encoder accessories, namely, electric relays and electric proximity switches; electronic rate indicators, namely, speed indicators; and multi-function process electrical controllers,” in International Class 9. 

 

TMEP §§1402.01

 

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

 

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.

 

MULTI-CLASS APPLICATION

 

If applicant adds any classes, then applicant must submit a specimen showing use of the mark for each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  Applicant must also submit a statement that "the new specimen was in use in commerce on or before the application filing date," verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a).  If the new specimen is the same as the specimen(s) already of record, then applicant need not verify the date of use.

 

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, as well as the $100 fee per class for the amendment to allege use (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class, 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 amendment to allege use;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen having been in use in commerce prior to the filing of the amendment to allege use;

 

(c)   a statement that “the mark was in use in commerce prior to the filing of the amendment to allege use, as evidenced by the attached specimen” and specifying the goods and/or services on which applicant is now using the mark in commerce; 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), 2.76(b), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen of use is acceptable only for Class 9.

 

COMMENTS

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/Hanno Rittner/

Trademark Examining Attorney

Law Office 117

(571) 272-7188

hanno.rittner@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.