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. 79184407
MARK: BE THINK INNOVATE
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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: GRUNDFOS HOLDING A/S
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1291873
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and services in International Classes 007 and 011:
International Class 007:
Pumps for water supply, pumps for fresh and polluted water; pumps for industrial purposes, regulation and control devices for use in connection with pumps and pumping, such as valves, machine tools, electric motors (not for land vehicles), filters (being parts of machines or motors), cleaning devices (being parts of machines or motors) and cleaning machines
International Class 011:
Cooling appliances and installations, water supply installations
See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES that applicant must address:
IDENTIFICATION OF GOODS REQUIREMENT
Additionally, the identification of goods contains parenthetical language inserted by the International Bureau, see below parenthetical language in bold, because the IB was not able to determine if the classification assigned to particular goods and/or services by an applicant’s Office of origin was correct. See TMEP §1904.02(c).
This language is not part of the identification and will be removed. Id. It will not appear on any U.S. registration certificate that may issue. See id.
In an application filed under Trademark Act Section 66(a), 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), 1904.02(b). 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); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods in International Classes 007 and 011, respectively, the classifications specified in the application for these goods.
The following substitute wording is suggested, if accurate:
International Class 007:
Pumps for water supply{specify use, e.g., pumps for water supply for use with
water treatment equipment}, pumps for fresh and polluted water {specify use,
e.g., pumps for fresh and polluted water for use with water treatment equipment}; pumps for industrial
purposes {specify nature of pumps, e.g., pumps for industrial purposes in
the nature of high pressure pumps}; pumps for fuel oil, hydraulic pumps, air compressor pumps, regulation and control devices for use in connection with pumps and pumping, such
as namely, valves; machine tools for {indicate
purpose or function, e.g., compacting powder materials}; electric motors, not for land
vehicles, filters for {specify type of machine} and
motors; (being parts of machines or motors), cleaning devices (being
parts of machines or motors) and cleaning machines {specify devices and machines, e.g., cleaning devices and cleaning
machines, namely, steam cleaning
machines}
International Class 011:
Cooling appliances and installations {specify applications, e.g., cooling
appliances and installations, namely, cooling installations for water}; refrigerating appliances
and installations, air-conditioning installations, air-cooling apparatus, water distribution installations, water supply installations {specify installations, e.g., regulating accessories for water supply, namely, metered valves}; and heat pumps
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the following goods in International Classes 007 and 011 will be deleted from the application:
International Class 007:
Pumps for water supply, pumps for fresh and polluted water, pumps for industrial purposes, pumps for fuel oil, hydraulic pumps, air compressor pumps, regulation and control devices for use in connection with pumps and pumping, such as valves, machine tools, electric motors (not for land vehicles), filters (being parts of machines or motors), cleaning devices (being parts of machines or motors) and cleaning machines
International Class 011:
Cooling appliances and installations, water supply installations
In such case, the application will then proceed only with the following goods in International Classes 007 and 011:
International Class 007:
pumps for fuel oil, hydraulic pumps, air compressor pumps
International Class 011:
refrigerating appliances and installations, air-conditioning installations, air-cooling apparatus, water distribution installations, heat pumps
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE TO OFFICE ACTION
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. §2.191; 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.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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.
/Justin Severson/
Examining Attorney
Law Office 111
571-272-6893
justin.severson@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.