To: | Siemens Aktiengesellschaft (MAMastrovito@lawabel.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79218399 - SIEMENS - N/A |
Sent: | 6/28/2018 8:25:45 AM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79218399
MARK: SIEMENS
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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: Siemens Aktiengesellschaft
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/28/2018
THIS IS A FINAL ACTION.
INTERNATIONAL REGISTRATION NO. 1369787
This Office action is in response to applicant’s communication filed on May 17, 2018.
In a previous Office action dated November 11, 2017, applicant was required to satisfy the following requirements: provide a mark description, amend the identification of services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: mark description. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the requirement 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 SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
The identification of “Industrial analysis, namely, industrial planning and design services and consulting services in the field of industrial engineering” in International Class 42 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the phrase “industrial planning and design services” is indefinite because it does not specify the place or thing to be planned and designed.
The following substitute wording is suggested, if accurate:
Class 36: (no changes)
Class 42: Industrial analysis, namely, industrial planning and design of {specify space or premises}, and consulting services in the field of industrial engineering; Industrial research services for others in the fields of electrical engineering, electronics, information technology, medical engineering, physics, chemistry and mechanical engineering
Class 44: (no changes)
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.
RESPONSE
Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment: “Industrial analysis, namely, industrial planning and design services and consulting services in the field of industrial engineering.” 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following:
Class 36: Insurance underwriting services for all types of insurance, consulting and providing information regarding insurance; financial and monetary affairs services, namely, financial information, management and analysis services, financial consulting services, venture capital financing services and venture capital advisory services, credit card transaction processing services, monetary exchange services; real estate affairs, namely, real estate financing services, real estate investment services
Class 42: Industrial research services for others in the fields of electrical engineering, electronics, information technology, medical engineering, physics, chemistry and mechanical engineering
Class 44: Medical diagnostic services, namely, medical diagnostic testing, monitoring and reporting services, consultancy in the field of medical diagnostics
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 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). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
/Scott Kumis/
Scott Kumis
Trademark Examining Attorney
Law Office 125
(571)272-2693
Scott.Kumis@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.