UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FINAL OFFICE ACTION – PARTIAL REQUIREMENT

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID PARTIAL 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: 2/20/2015

 

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1217716

 

PLEASE NOTE: Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 21, 2015.

 

In a previous Office action(s) dated October 7, 2014, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with registered marks.    In addition, applicant was required to satisfy the following requirement(s):  amend the identifications of goods in International Classes 7, 9 and 11.

 

Based on applicant’s response, the trademark examining attorney withdraws the following: (1) the Section 2(d) refusal is withdrawn, based upon the applicant’s amended identifications of goods; and (2) the identification of goods requirement in International Class 7 is withdrawn as satisfied.  See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of goods requirement – International Class 9
• Identification of goods requirement – International Class 11

 

 

Identification Of Goods – International Class 9

The identification of goods is too broad and must be clarified because it could include goods classified in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Although the applicant identifies the goods as “controllers,” the identification suggests that the goods are simply a feature of the metalworking machinery that perform a particular metalworking function, rather than an electronic device that controls how a separate feature of the machine performs the described function.

 

The following substitute wording is suggested, if accurate:  “Electric apparatus and instruments for the metallurgical industry, namely, electric and electronic control devices for steel mills, namely, controllers for metalworking shaping machinery for controlling flatness, roughness, pressure and tensioning for influencing the properties of rolled steel; scientific, surveying, optical, weighing, measuring, signaling, control and teaching apparatus and instruments, namely, strip flatness meters, thermometers, speedometers, pressure gauges, angle gauges, distance meters, roughness gauges, all for use in operating and controlling operations of metallurgical plants, casting plants for metals and rolling mills for metals; apparatus for recording, transmission or reproduction of sound or images, namely, electronic signal transmitters for use in rolling mills and continuous casting plants; calculating machines, data processors, and computers all for use in operating and controlling operations of metallurgical plants and rolling mills; prerecorded magnetic data carriers featuring information for controlling rolling mills; stored computer programs for controlling rolling mills, furnace plants, continuous casting machines; stored computer programs for controlling and regulating all of the following machines for the metallurgical industry and the steel industry, namely, continuous casting machines, rolling machines, forging machines, pressing machines, and computer applications software stored on magnetic data carriers for controlling machine tools.”

 

Identification Of Goods – International Class 11

The word “system” in the identification of goods is indefinite and must be amended to list the primary parts or components 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).  Applicant should also classify the system in the same international class as its primary parts or components.  TMEP §1401.05(d). 

 

The following substitute wording is suggested, if accurate:  “Apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry, in the nature of furnaces for metallurgical plants, for steel mills, for continuous metal casting plants, for rolling mills, for forging and pressing plants; apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry in the nature of cooling systems composed of [indicate primary components, e.g., evaporative air coolers and air cooling apparatus]   for machines for the metallurgical industry, for machines for the steel mill industry, for continuous casting machines, for rolling machines for the rolling of metals, for forging machines, for presses for metals; apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry, in the nature of drying, ventilating fans and louvers and cooling water circuit installations in the nature of cooling towers for metallurgical plants, for steel mills, for continuous casting plants, for rolling mills, and for forging and pressing plants.”

 

Advisory – Identification Of Goods and/or Services

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv).  In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).

 

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). 

 

 

CONCLUSION

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  electric apparatus and instruments for the metallurgical industry, namely, electric and electronic control devices for steel mills, namely, flatness controllers, roughness controllers, pressure controllers and tensioning controllers for influencing the properties of rolled steel;  in International Class 9; and apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry in the nature of cooling systems for machines for the metallurgical industry, for machines for the steel mill industry, for continuous casting machines, for rolling machines for the rolling of metals, for forging machines, for presses for metals; drying in International Class 11.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods: Machines for the metallurgical industry, namely, machines for filling and emptying blast furnaces, machines for tilting, pivoting, and moving converters and ladles; machines for the metallurgical industry, namely, continuous casting machines, rolling machines for rolling metals, forging machines, presses for metals; machine tools for metalworking; parts of the foregoing machines, namely, clutches and couplings and devices for power transfer of the aforementioned machines; motors and engines except engines for land vehicles; machine couplings and transmission components except such for land vehicles in International Class 7 (unchanged); Scientific, surveying, optical, weighing, measuring, signaling, control and teaching apparatus and instruments, namely, strip flatness meters, thermometers, speedometers, pressure gauges, angle gauges, distance meters, roughness gauges, all for use in operating and controlling operations of metallurgical plants, casting plants for metals and rolling mills for metals; apparatus for recording, transmission or reproduction of sound or images, namely, signal transmitters for use in rolling mills and continuous casting plants; calculating machines, data processors, and computers all for use in operating and controlling operations of metallurgical plants and rolling mills; prerecorded magnetic data carriers featuring information for controlling rolling mills; stored computer programs for controlling rolling mills, furnace plants, continuous casting machines; stored computer programs for controlling and regulating all of the following machines for the metallurgical industry and the steel industry, namely, continuous casting machines, rolling machines, forging machines, pressing machines, and computer applications software stored on magnetic data carriers for controlling machine tools in International Class 9; and Apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry, in the nature of furnaces for metallurgical plants, for steel mills, for continuous metal casting plants, for rolling mills, for forging and pressing plants; apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry, in the nature of furnaces for metallurgical plants, for steel mills, for continuous metal casting plants, for rolling mills, for forging and pressing plants; apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply purposes for the metallurgical industry, in the nature of drying, ventilating fans and louvers and cooling water circuit installations in the nature of cooling towers for metallurgical plants, for steel mills, for continuous casting plants, for rolling mills, and for forging and pressing plants in International Class 11. 

 

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. §2.63(b)(1)-(2); 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.  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. §§2.62(c), 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.

 

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Examining Attorney

Law Office 110

571-272-9370

andrea.nadelman@uspto.gov

 

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 2/20/2015 FOR U.S. APPLICATION SERIAL NO. 79152701

 

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 2/20/2015 (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.