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. 79195790
MARK: OMRON
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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: OMRON Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1318180
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.
A. No Conflicting Marks Found
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).
B. Identification of Goods/Services
Part of the identifications of goods of services is indefinite or vague and requires clarification. Specific issues will be addressed within each class below. As to each of the identifications of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §§1402.01 and 1402.03(a).
In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitation of services was indefinite. Applicant is not required to accept these proposals but any further changes must be within the scope of the identifications and recitations set out in the application. Please see below for a more thorough discussion.
· International Class 007: Industrial robots; robotic arms for industrial purposes; robots machines; self-propelled robots used for carrying cargoes for industrial purposes; conveying robots and their parts and fittings; robots and robotic arms for sorting, carrying and supplying parts as an adjunct to industrial assembly operation; product grippers, graspers and end effectors for industrial robots; robots and robotic arms for metalworking; metalworking machines and tools; robots and robotic arms for mining; mining machines and apparatus; robots and robotic arms for construction; construction machines and apparatus; robots and robotic arms for loading-unloading; loading-unloading machines and apparatus; robots and robotic arms for industrial fishing; industrial fishing machines; robots and robotic arms as chemical processing machines and apparatus; chemical processing machines and apparatus; robots and robotic arms as textile machines; textile machines and apparatus; robots and robotic arms for food or beverage processing; food or beverage processing machines and apparatus; robots and robotic arms for lumbering, woodworking, or veneer or plywood making; lumbering, woodworking, or veneer or plywood making machines and apparatus; robots and robotic arms for pulp making, papermaking or paper-working; pulp making, papermaking or paper-working machines and apparatus; robots and robotic arms for printing or bookbinding; printing or bookbinding machines and apparatus; sewing robots and robotic arms; sewing machines; robots and robotic arms for agricultural use; agricultural machines, agricultural implements other than hand-operated; robots and robotic arms for shoe making; shoe making machines; robots and robotic arms for leather tanning; leather tanning machines; robots and robotic arms for tobacco processing; tobacco processing machines; robots and robotic arms for glassware manufacturing; glassware manufacturing machines and apparatus; robots and robotic arms for painting; painting machines and apparatus; robots and robotic arms for packaging or wrapping; packaging or wrapping machines and apparatus; robots and robotic arms for ceramics processing; power-operated potters' wheels; robots and robotic arms for plastic processing; plastic processing machines and apparatus; robots and robotic arms for manufacturing electronic components; robots and robotic arms for semiconductor manufacturing; semiconductor manufacturing machines and systems; robots and robotic arms for manufacturing rubber goods; machines and apparatus for manufacturing rubber goods; robots and robotic arms for stone working; stone working machines and apparatus; robots and robotic arms as pneumatic or hydraulic machines and instruments; pneumatic or hydraulic machines and instruments; robots and robotic arms for fuel dispensing for service stations; fuel dispensing machines for service stations; robots and robotic arms for washing laundry; washing machines laundry; robots and robotic arms for repairing or fixing; apparatus for machining; robots and robotic arms for vehicle washing; vehicle washing installations; robots and robotic arms for food mixing for commercial use; food mixing machines for commercial use; robots and robotic arms for food peeling for commercial use; food peeling machines for commercial use; robots and robotic arms for food cutting, chopping and slicing for commercial use; food cutting, chopping and slicing machines for commercial use; robots and robotic arms for dishwashing; dishwashers; robots and robotic arms for floor polishing; robots and robotic arms for wax-polishing; electric machines and apparatus for wax-polishing; robots and robotic arms for vacuum cleaning; electric vacuum cleaners; robots and robotic arms for spraying for disinfecting, insecticides and deodorants not for agricultural purposes; power sprayers for disinfecting, insecticides and deodorants not for agricultural purposes; robots and robotic arms for lawn-mowing; lawnmowers; non-electric prime movers not for land vehicles and parts thereof; adhesive tape dispensing machines; automatic stamping machines; vending machines; mechanical parking systems; machine elements not for land vehicles; curtain drawing devices electrically operated; electric door openers; waste compacting machines and apparatus; waste crushing machines; 3D printers; starters for motors and engines; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; AC generators alternators; DC generators; electric food blenders for household purposes; dynamo brushes
Applicant may substitute the following wording, if accurate:
· International Class 007: Industrial robots; robotic arms for industrial purposes; {industrial} robots machines; self-propelled robots used for carrying cargoes for industrial purposes; conveying robots and their {structural}parts and fittings; robots and robotic arms for sorting, carrying and supplying parts as an adjunct to industrial assembly operation; (structural parts for industrial robots}{namely}product grippers, graspers and end effectors for industrial robots; {industrial} robots and robotic arms for metalworking; metalworking machines and tools {please define e.g. Metal working machines, namely saws and cutters}; {industrial} robots and robotic arms for mining; mining machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for construction; construction machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for loading-unloading; loading-unloading machines and apparatus; {please define the specific machine and apparatus}; robots and robotic arms for industrial fishing; industrial fishing machines; {industrial} robots and robotic arms as chemical processing machines and apparatus; chemical processing machines and apparatus{please define the specific machine and apparatus}; {industrial} robots and robotic arms as textile machines; textile machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for food or beverage processing; food or beverage processing machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for lumbering, woodworking, or veneer or plywood making; lumbering, woodworking, or veneer or plywood making machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for pulp making, papermaking or paper-working; pulp making, papermaking or paper-working machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for printing or bookbinding; printing or bookbinding machines and apparatus {please define the specific machine and apparatus}; sewing robots and robotic arms; sewing machines; {industrial} robots and robotic arms for agricultural use; agricultural machines, agricultural implements other than hand-operated {please define the specific machines and implements}; {industrial} robots and robotic arms for shoe making; shoe making machines; {industrial} robots and robotic arms for leather tanning; leather tanning machines; {industrial} robots and robotic arms for tobacco processing; tobacco processing machines; {industrial} robots and robotic arms for glassware manufacturing; glassware manufacturing machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for painting; painting machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for packaging or wrapping; packaging or wrapping machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for ceramics processing; power-operated potters' wheels; {industrial} robots and robotic arms for plastic processing; plastic processing machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms for manufacturing electronic components; {industrial} robots and robotic arms for semiconductor manufacturing; semiconductor manufacturing machines and systems {define components of the system}; {industrial} robots and robotic arms for manufacturing rubber goods; machines and apparatus for manufacturing rubber goods {please define the specific machine and apparatus}; {industrial} robots and robotic arms for stone working; stone working machines and apparatus {please define the specific machine and apparatus}; {industrial} robots and robotic arms as pneumatic or hydraulic machines and instruments; pneumatic or hydraulic machines and instruments {please define the instruments and machines}; {industrial} robots and robotic arms for fuel dispensing for service stations; fuel dispensing machines for service stations; {industrial} robots and robotic arms for washing laundry; washing machines laundry;{industrial} robots and robotic arms for repairing or fixing; apparatus for machining {please define the specific machine and apparatus}; {industrial} robots and robotic arms for vehicle washing; vehicle washing installations; {industrial} robots and robotic arms for food mixing for commercial use; food mixing machines for commercial use; {industrial} robots and robotic arms for food peeling for commercial use; food peeling machines for commercial use; {industrial} robots and robotic arms for food cutting, chopping and slicing for commercial use; food cutting, chopping and slicing machines for commercial use; {industrial} robots and robotic arms for dishwashing; dishwashers; {industrial} robots and robotic arms for floor polishing; robots and robotic arms for wax-polishing; electric machines and apparatus for wax-polishing; robots and robotic arms for vacuum cleaning; electric vacuum cleaners; robots and robotic arms for spraying for disinfecting, insecticides and deodorants not for agricultural purposes; power sprayers for disinfecting, insecticides and deodorants not for agricultural purposes; robots and robotic arms for lawn-mowing; lawnmowers; non-electric prime movers not for land vehicles and parts thereof; adhesive tape dispensing machines; automatic stamping machines; vending machines; mechanical parking systems; machine elements not for land vehicles; curtain drawing devices electrically operated; electric door openers; waste compacting machines and apparatus; waste crushing machines; 3D printers; starters for motors and engines; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; AC generators alternators; DC generators; electric food blenders for household purposes; dynamo brushes {please define the machines and apparatus and place industrial in front of robots}
Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services 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. See TMEP §1402.04.
C. Description for stylized letting no standard character
The applied-for mark is entirely in stylized lettering, not in standard characters, and applicant did not provide the required description of the mark with the initial application. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies the literal elements in the mark. See 37 C.F.R. §2.37; TMEP §§808.01. 808.02.
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the wording “OMRON” in stylized font.
D. General Inquiry on Significance
Applicant must explain whether “OMRON” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
Does the mark translate in English?
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.
Rossman, William
/Rossman, William/
EXAMINING ATTORNEY
LAW OFFICE 109
PHONE: 571-272-9029
EMAIL: william.rossman@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.