UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1291873

 

The trademark examining attorney has reviewed applicant’s response to the Office action received July 12, 2016.  Applicant must address the following:

 

Identification of Goods

 

The wording “such as” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods and must be all-inclusive.  See TMEP §1402.03(a).  Applicant may adopt the following, if accurate:

International Class 007:

Pumps for water supply, namely, centrifugal pumps for domestic and commercial water supply, pumps for water supply for use with water treatment equipment; pumps for fresh and polluted water for use with water treatment equipment, sewage pumps for treatment of waste water and sewage, circulation pumps for heating and cooling systems; pumps for industrial purposes in the nature of high pressure pumps and pumps for industrial processes such as, namely, pumps for dosing, cooling, water transportation, firefighting, and food and beverage industry processes; pumps for fuel oil; hydraulic pumps; air compressor pumps; regulation and control devices for use in connection with pumps and pumping, namely, valves, machine tools for use with water pumps, electric motors, not for land vehicles, oil filters being part of machines or motors, cleaning devices and cleaning machines, namely cleaning apparatus being parts of machines or engines and cleaning machines; component and replacement parts for the aforementioned goods

If applicant does not respond to this Office action within six months of the issue/mailing date, the following goods will be deleted from the application: 

 

pumps for industrial purposes in the nature of high pressure pumps and pumps for industrial processes such as pumps for dosing, cooling, water transportation, firefighting, and food and beverage industry processes

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).  The application will then proceed with the following goods only:

Pumps for water supply, namely, centrifugal pumps for domestic and commercial water supply, pumps for water supply for use with water treatment equipment; pumps for fresh and polluted water for use with water treatment equipment, sewage pumps for treatment of waste water and sewage, circulation pumps for heating and cooling systems; pumps for fuel oil; hydraulic pumps; air compressor pumps; regulation and control devices for use in connection with pumps and pumping, namely, valves, machine tools for use with water pumps, electric motors, not for land vehicles, oil filters being part of machines or motors, cleaning devices and cleaning machines, namely cleaning apparatus being parts of machines or engines and cleaning machines; component and replacement parts for the aforementioned goods

See TMEP §718.02(a).  In such case, applicant’s only option would be to file a timely petition to revive the abandoned goods, which, if granted, would allow for the reinsertion of these goods into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

RESPONSE TO OFFICE ACTION

 

Applicant is encouraged to 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.

 

 

/Justin Severson/

Examining Attorney

Law Office 111

571-272-6893

 

justin.severson@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

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