Offc Action Outgoing

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.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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:

Identification of Goods Amendments Required
Entity Information – Place of Incorporation Required
Mark Significance Inquiry

IDENTIFICATION OF GOODS AMENDMENTS REQUIRED

Particular wording in the Identification of Goods is indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The specific issues are set forth below. Applicant should note that, when amending the Identification, because the application was filed pursuant to Section 66(a) of the Trademark Act, the Classification of Goods cannot be changed. Therefore, applicant may only amend the Identification to specify goods in Class 11. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).

The wording “Heating, steam generating, separation and purification apparatus and reactors suitable for gases, and corresponding apparatus combinations” in Class 11 is indefinite and must be amended.

Applicant must clearly specify the nature of the goods, e.g., “electric heaters for commercial use for heating gases”, “steam generators”, “Separators for the cleaning and purification of air and gases”, “Gas purification machines”, etc.

The wording “apparatus for cleaning or separating gases and for filtering impurities from gases, the aforesaid apparatus being in particular membrane-based or adsorption-based, or a combination” in Class 11 is overly-broad and indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, this wording could encompass “Filters and filtering devices for gas conditioning” in Class 11, “Gas filters for motors and engines” in Class 7, or “Polymeric membranes in chemical form for the separation of gas” in Class 1. As explained above, the classification of goods cannot be changed and applicant must specify the goods in Class 11 only, e.g., Gas recycling system comprised primarily of pressure swing adsorption equipment for the recovery, purification and return of gases in industrial applications, etc.

The wording “evaporators, gas condensers, other than parts of machines, heat exchangers, other than parts of machines” in Class 11 is indefinite and must be amended. Applicant must more clearly identify the nature of the evaporators, e.g., “evaporators for chemical processing”. The other goods in this list are definite.

The wording “adsorption and membrane gas purifiers and gas conditioners” in Class 11 is overly-broad and indefinite and must be amended. Specifically, this wording could encompass goods such as “Polymeric membranes in chemical form for the separation of gas” in Class 1 or “hydrogen purifiers and hydrogen purification membranes” in Class 11. As above, the classification of goods cannot be changed. Therefore, applicant must clearly specify the nature of the goods in Class 11, e.g., “hydrogen purification membranes”, “pressure swing adsorption equipment, temperature swing adsorption equipment, and perm selective membrane equipment for industrial purification of gases”, etc.

The wording “reaction apparatus for environmental protection technology, namely, exhaust gas purifying and air purifying apparatus, and gas conditioning apparatus” is overly-broad and indefinite and must be amended. Specifically, this wording could encompass “Particulate air filters for exhaust systems for internal combustion engines” in Class 7 or “Filters and filtering devices for air and gas conditioning” in Class 11. As above, the classification of goods cannot be changed and so applicant must clarify the nature of the goods in Class 11 only.

Overall Identification

Applicant may adopt the following Identification of Goods, if accurate:

Class 11: Heating, steam generating, separation and purification apparatus, namely, [identify the specific goods, e.g., electric heaters for commercial use for heating gases, steam generators, separators for cleaning and purification of aid and gases, etc.] and reactors suitable for gases in the nature of [clarify the nature of the goods, e.g., Biogas fermentation reactors, namely, percolating fermenters and dry fermenters, etc.], and corresponding apparatus combinations in the nature of [clarify the combinations, e.g., Gas recycling system comprised primarily of pressure swing adsorption equipment for the recovery, purification and return of gases in industrial applications]; apparatus for cleaning or separating gases and for filtering impurities from gases, the aforesaid apparatus being in particular membrane-based or adsorption-based, or a combination, namely, [specify the nature of the goods in Class 11, e.g., Filters and filtering devices for gas conditioning, Gas recycling system comprised primarily of pressure swing adsorption equipment for the recovery, purification and return of gases in industrial applications, etc.]; evaporators, namely, [clarify the nature of the evaporators, e.g., evaporators for chemical processing, etc.], gas condensers, other than parts of machines, heat exchangers, other than parts of machines; adsorption and membrane gas purifiers and gas conditioners, namely, [clarify the goods in Class 11, e.g., hydrogen purification membranes, pressure swing adsorption equipment, temperature swing adsorption equipment, and perm selective membrane equipment for industrial purification of gases, etc.]; reaction apparatus for environmental protection technology, namely, exhaust gas purifying and air purifying apparatus, and gas conditioning apparatus all of the foregoing in the nature of [specify goods in Class 11, e.g., Filters and filtering devices for air and gas conditioning, etc.]

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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.

ENTITY INFORMATION – PLACE OF INCORPORATION REQUIRED

Applicant must specify its form of business or type of legal entity and foreign country of organization or incorporation. See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of international registrations to the United States”). See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

Here, applicant has provided the name “Linde Aktiengesellschaft” and indicated that it is a “Joint Stock Company” but has not indicated the place of incorporation.

If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.

Applicant may adopt the following entity statement, if accurate:

Applicant, Linde Aktiengesellschaft, is a Joint Stock Company organized under the laws of Germany.

MARK SIGNIFICANCE INQUIRY

To permit proper examination of the application, applicant must explain whether the letters in the mark “HI” or “HI SELECT” have any significance in the gas or purification trade or industry or as applied to applicant’s goods, or if such letters represent a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.

Also, if HI is an acronym or abbreviation, applicant must indicate what this is an abbreviation or shortened term for.

Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

RESPONSE GUIDELINES

For this application to proceed further, applicant must explicitly address each requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02.

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

If applicant has questions regarding this Office action, please telephone or e-mail 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.

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272 - 4514

Alison.Keeley@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.