UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79173775
MARK: HERTZ KOMPRESSOREN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: DALGAKIRAN MAKINA SANAYI VE TICARET ANON ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1208286
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SUMMARY OF ISSUES that must be addressed:
Requirements
1. Identification of Goods Indefinite
2. Color Claim and Mark Description Required
3. Translation Required
4. Disclaimer Required
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, applicant must address the application requirements set forth below.
1. Identification of Goods
Applicant submitted the following identification with the application:
International Class 7
Compressed air engines; compressors; painting machines; spray guns for paint; electric punching machines and guns; electric glue guns; compressed air guns for the extrusion of mastics; electric hand drills; saws included in this class; scroll saws; spiral binding machines for industrial use; vehicle washing installations; robots which have the same functions with above mentioned machines
The above bolded wording in the identification of goods needs clarification because it does not identify the goods with enough specificity, and it is too broad because it may identify goods in multiple International Classes. TMEP §§1402.01 and 1402.03(a).
Specifically, applicant must specify the particular type of compressors provided under the mark.
Applicant must also clarify the particular nature and use of the “punching machines and guns” identified.
Finally, applicant must specify that the identified saws are power-operated, and delete the indefinite wording “included in this class” as it is superfluous.
In summary, applicant may adopt the following identification of goods, if accurate:
International Class 7
Compressed air engines; compressors, namely, [Specify particular compressors offered, e.g. air compressors, electric compressors, rotary compressors, and compressors for machines]; painting machines; spray guns for paint; electric punching machines and guns in the nature of punching presses for metal working; electric glue guns; compressed air guns for the extrusion of mastics; electric hand drills; power-operated saws; power tools, namely, scroll saws; spiral binding machines for industrial use; vehicle washing installations; robots which have the same functions with above mentioned machines
In addition, in a Section 66(a) application, an applicant may not change the classification of goods 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 from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods 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. See TMEP §1402.04.
2. Color Claim and Mark Description Referencing Color Required
Therefore, applicant must submit (1) a color claim and (2) a mark description of all the colors in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following color claim and mark description are suggested, if accurate:
Color Claim
The colors blue and white are claimed as a feature of the mark.
Mark Description
The mark consists of the design of four blue quadrilaterals that increase in size from left to right, and the stylized wording “HERTZ KOMPRESSOREN” in white within the largest quadrilateral.
See TMEP §807.07(b).
3. Translation Required
The following translation statement is suggested:
The English translation of the word “KOMPRESSOREN” in the mark is “compressors”.
TMEP §809.03. See attached translation evidence.
4. Disclaimer Required
Specifically, applicant identifies use of the proposed mark in connection with, among other items, compressors. The term “kompressoren” translated to “compressors” in English. As such, the term merely identifies the generic name for the goods with which the mark is utilized.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “KOMPRESSOREN” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Comments
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp
/Nicholas A. Coleman/
Examining Attorney
Law Office 115
Phone: (571) 272-4917
Email: nicholas.coleman@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.