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: 11/21/2013

 

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1154350

 

This Office action is in response to applicant’s communication filed on October 16, 2013. An Office action issued April 17, 2013 required that applicant amend the identification of goods and services and specify the significance of the mark. The applicant has specified that the mark has no significance and the requirement is satisfied. The amended identification is acceptable in part and the requirement is satisfied as to that wording. Some of the wording remains unacceptable and the requirement is made final as to that wording.

 

Identification of Goods: International Class 006

 

The wording “parts and fittings for pipes or for pipelines” in the identification of goods is indefinite and must be clarified because the type of parts and fittings are not identified. See TMEP §1402.01. The applicant may adopt the following wording, if accurate: “{specify type of parts and fittings, e.g., structural, component} parts and fittings for pipes or for pipelines.”

 

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods 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.

 

 

Classification Cannot Be Changed

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b). 

 

Therefore, any modification to this wording must identify goods in International Class 006, the classification specified in the application for these goods. 

 

 

Identification of Goods: International Class 007

 

The applicant has used a semicolon between the words “welding; namely” and “pipelines; namely” and it must be corrected to a comma.

 

The wording “internal and external pipeline weld inspection systems” in the identification of goods is indefinite and must be clarified because the components of the systems are not identified. See TMEP §1402.01. The applicant may adopt the following wording, if accurate: “internal and external pipeline weld inspection systems comprised of {specify components in this class}.”

 

The wording “internal lineup clamps, internal pneumatic line-up and copper backup clamps, external welding clamps for supporting automatic external welding systems” must specify that the goods are metal. The applicant may adopt the following wording, if accurate: “metal internal lineup clamps, metal internal pneumatic line-up and copper backup clamps, metal external welding clamps for supporting automatic external welding systems.”

 

The wording “vision controlled hydraulic, pneumatic and motorized inspection systems” must specify the components of the system. The applicant may adopt the following wording, if accurate: “vision controlled hydraulic, pneumatic and motorized inspection systems comprised of {specify components in this class}.”

 

The wording “motorized internal clamps” must specify that the goods are metal. The applicant may adopt the following wording, if accurate: “metal motorized internal clamps.”

 

The wording “machines and machine tools for use in the laying of pipelines; namely, pipe bending machines such as hydraulic or pneumatic or motorized benders, hydraulic and pneumatic and motorized mandrels” is indefinite because the semicolon must be amended to a comma (as specified above). The wording “such as” is indefinite and open-ended. See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.” Applicant must specify that the “benders” are “bending machines.” The applicant may adopt the following wording, if accurate: “machines and machine tools for use in the laying of pipelines, namely, pipe bending machines in the nature of hydraulic or pneumatic or motorized bending machines, hydraulic and pneumatic and motorized mandrels.”

 

The wording “pipeline construction supports such as conveyors and rollers, bending sets and dies for accommodating various pipe sizes in a bender, compressors, pipe handling cradles, vehicle mounted back end rings, remote-controlled self-loading padders and in-trench pushers, motorized pipe endprep equipment” requires amendment because “such as” is overly broad. “Rollers” must clarify the type of rollers. “Compressors” must specify the type of compressors. “Pipe handling cradles” does not clearly identify goods in this class. “Vehicle mounted back end rings” must clarify the type of rings. “Remote-controlled self-loading padders and in-trench pushers” does not clearly identify goods in this class. “Motorized pipe endprep equipment” must clarify the type of equipment. The applicant may adopt the following wording, if accurate: “Pipeline construction supports, namely, conveyors and roller conveyors, bending sets and dies for accommodating various pipe sizes in a bender, {specify type of compressors, e.g., air compressors, gas compressors}, {clarify nature of pipe handling cradles}, vehicle mounted back end piston rings, remote-controlled self-loading {clarify padders} and in-trench pushers in the nature of plows for attachment to vehicles, motorized pipe endprep equipment in the nature of {specify equipment}.”

 

The wording “machines and machine tools for use in manufacture of pipes or pipelines; namely, pipe conveying systems” because the semicolon must be amended to a comma (as specified above). The components of the system must also be identified. The applicant may adopt the following wording, if accurate: “machines and machine tools for use in manufacture of pipes or pipelines, namely, pipe conveying systems comprised of {specify components in this class}.”

 

The wording “automatic pipe edge measurement systems” must specify the components. The applicant may adopt the following wording, if accurate: “automatic pipe edge measurement systems comprised of {specify components in this class}.”

 

The wording “control systems for monitoring pipe routing” must clarify that the control system is in this class. The applicant may adopt the following wording, if accurate: “control systems for monitoring pipe routing sold as component parts of machines.”

 

The wording “control systems and equipment for blast cleaning, coating removal, priming, coating, or tape wrapping of pipe, pipe conveyors, pipe ejectors for removing or introducing pipe from or into a an assembly path, motor control centers for operating motorized equipment, automatic pusher racks, wheeled skew conveyors, hydraulic, pneumatic, or motorized turning rollers for inspection cleaning or applying coatings, rollers conveyors, end prep support units, pipe transfer carriages, pipe track type line-up modules” is unclear as to the type of goods applicant is identifying and whether the applicant is only identifying control systems and equipment or whether the applicant is identifying multiple goods in a single phrase. The wording must be clarified to more specifically identify the type of control systems and equipment in this class. The applicant may adopt the following wording, if accurate: “control systems and equipment in the nature of {specify equipment in this class} sold as component parts of machines for blast cleaning, coating removal, priming, coating, or tape wrapping of pipe; pipe conveyors; {clarify “pipe ejectors for removing or introducing pipe from or into a an assembly path” to clearly identify goods in this class}; motor control centers sold as component parts of machines for operating motorized equipment, automatic pusher racks, wheeled skew conveyors, hydraulic, pneumatic, or motorized turning rollers for inspection cleaning or applying coatings; roller conveyors; end prep support units in the nature of {specify goods in this class}; pipe transfer carriages; {clarify “pipe track type line-up modules” to identify goods in this class}.”

 

The wording “parts, fittings and automatic control for all the aforesaid” is indefinite and must be clarified because the type of parts and fittings are not identified. The wording “automatic control” must be clarified to specifically identify goods in this class. The applicant may adopt the following wording, if accurate: “{specify type of parts and fittings, e.g., structural, component} parts and fittings and automatic controls in the nature of {specify goods in this class} for all the aforesaid.”

 

 

 

 

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods 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.

 

 

 

Classification Cannot Be Changed

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b). 

 

Therefore, any modification to this wording must identify goods in International Class 007, the classification specified in the application for these goods. 

 

Identification of Services: International Class 042

 

The wording “research in the field of pipelines; namely, pipeline design efficiency, pipeline construction efficiency and computer aided pipeline design; research in the field of welding; namely, welding quality control and welding inspection technology” in the identification of services is indefinite and must be clarified because there is a semicolon between “pipelines” and “namely” and between “welding and namely;” it should be a comma. The type of research must also be identified. See TMEP §1402.01. Applicant may substitute the following wording, if accurate: “{specify type of research, e.g., scientific} research in the field of pipelines, namely, pipeline design efficiency, pipeline construction efficiency and computer aided pipeline design; {specify type of research, e.g., scientific} research in the field of welding, namely, welding quality control and welding inspection technology.”

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services 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.

 

 

 

Classification Cannot Be Changed

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b). 

 

Therefore, any modification to this wording must identify services in International Class 042, the classification specified in the application for these services. 

 

Partial Final Refusal Guidelines

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: “parts and fittings for pipes or for pipelines” in International Class 006; “internal and external pipeline weld inspection systems; internal lineup clamps, internal pneumatic line-up and copper backup clamps, external welding clamps for supporting automatic external welding systems; vision controlled hydraulic, pneumatic and motorized inspection systems; motorized internal clamps; machines and machine tools for use in the laying of pipelines; namely, pipe bending machines such as hydraulic or pneumatic or motorized benders, hydraulic and pneumatic and motorized mandrels; pipeline construction supports such as conveyors and rollers, bending sets and dies for accommodating various pipe sizes in a bender, compressors, pipe handling cradles, vehicle mounted back end rings, remote-controlled self-loading padders and in-trench pushers, motorized pipe endprep equipment; machines and machine tools for use in manufacture of pipes or pipelines; namely, pipe conveying systems; automatic pipe edge measurement systems; control systems for monitoring pipe routing; control systems and equipment for blast cleaning, coating removal, priming, coating, or tape wrapping of pipe, pipe conveyors, pipe ejectors for removing or introducing pipe from or into a an assembly path, motor control centers for operating motorized equipment, automatic pusher racks, wheeled skew conveyors, hydraulic, pneumatic, or motorized turning rollers for inspection cleaning or applying coatings, rollers conveyors, end prep support units, pipe transfer carriages, pipe track type line-up modules; parts, fittings and automatic control for all the aforesaid” in International Class 007; and “research in the field of pipelines; namely, pipeline design efficiency, pipeline construction efficiency and computer aided pipeline design; research in the field of welding; namely, welding quality control and welding inspection technology” in International Class 042.

 

 

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the remaining goods and services.

 

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

 

(1)  A response that fully satisfies all outstanding requirements;

 

(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).

 

 

 

/Shannon Twohig/

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov

Phone: (571) 272-8855

Fax: (571) 273-9105

 

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 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.gov.uspto.report/.  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.gov.uspto.report/trademarks/process/status/.

 

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

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/21/2013 FOR U.S. APPLICATION SERIAL NO. 79127811

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/21/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.