Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 6/10/2014

INTERNATIONAL REGISTRATION NO. 1154350

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).  The requirement(s) and/or refusal(s) made final in the Office action dated November 21, 2013 are maintained and continue to be final.  See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).

 

Identification of Goods: International Class 007

 

The wording “internal and external pipeline weld inspection systems comprised of laser sensing or camera sensing components” in the identification of goods is indefinite and must be clarified because the primary components of the system do not appear to be goods in this class. See TMEP §1402.01. The word “system” in the identification of goods is indefinite and must be amended to (1) list the primary parts or components of the system and (2) describe the nature, purpose, or use of the system.  TMEP §1401.05(d).  Applicant should use common generic terms to specify the parts or components of the system.  See TMEP §§1402.01, 1402.03(a). 

 

The wording “pipe supporting and transporting cradles for suspending and relocating pipes, vehicle mounted back end rigs for transporting external welding equipment between pipeline weld joints, remote-controlled self-loading padders for redistributing dirt in pipeline trenching and in-trench pushers for manipulating dirt in pipeline trenching” requires amendment because it does not clearly identify goods in this class. The applicant may adopt the following wording, if accurate: “machine parts in the nature of  pipe supporting and transporting cradles for suspending and relocating pipes, vehicle mounted back end rigs for transporting external welding equipment between pipeline weld joints, remote-controlled self-loading padders as machines for redistributing dirt in pipeline trenching and in-trench pushers for manipulating dirt in pipeline trenching.”

 

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 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. 

 

 

In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  Accordingly, the request is denied.

 

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed.  See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c). 

 

If time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to comply with and/or overcome any outstanding final requirement(s) and/or refusal(s) and/or to file an appeal with the Board.  TMEP §715.03(a)(2)(B), (c).  However, if applicant has already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

 

/Shannon Twohig/

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov

Phone: (571) 272-8855

Fax: (571) 273-9105

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/10/2014 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 6/10/2014 (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.