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 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:

Identification of Goods – Indefinite
Significance of the Mark – Inquiry

IDENTIFICATION OF GOODS & SERVICES

- Generally

The identification of goods and/or services contains parentheses and brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services, or delete such wording from the identification.

- Class 9

The wording "security alarms," and "security alarms and burglar alarms" in the identification of goods and/or services in International Class(es) 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, personal security alarms and the like are in International Class 9 and security alarms for vehicles and the like are in International Class 12.

The wording "sensors for burglar alarms," "sensors [measurement apparatus], other than for medical use," "inspection apparatus for inspection of textiles using sensors," "level sensors," "position sensors," "displacement sensors" and "thermal sensors for human" in the identification of goods and/or services in International Class(es) 9 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "electric sensors, sensors for measuring {indicate quality or attribute measured, e.g., distance, chemical levels in aqueous solutions, etc.}, optical, inspection apparatus for industrial use, liquid level sensors, LED position sensors, displacement sensors for measuring distance, thermal sensors for human detection, namely, heat sensors for detecting the presence of humans, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

The wording "measuring or testing machines and instruments" and "sensors for measuring or testing machines and instruments" in the identification of goods and/or services in International Class(es) 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, level measuring machines, tool measuring instruments, textile testing machines, gas testing instruments, sensors for measuring concentrations of chemicals in water and the like are in International Class 9 and medical instruments to measure blood pressure, eye testing machines, sensory testing instruments in the nature of aesthesimeters, patient sensors for monitoring and measuring blood properties and respiratory events and the like are in International Class 10.

The wording "motion sensors" and "electronic components" in the identification of goods and/or services in International Class(es) 9 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "motion sensors in the nature of vehicle mounted GPS sensor for determining the rate of motion for a vehicle, piezoelectric switches, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

The wording "impact sensors" and "sensors" in the identification of goods and/or services in International Class(es) 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, helmet-mounted electronic sensors that detect and measure impacts to the head, temperature sensors and the like are in International Class 9, medical sensors in the nature of biofeedback sensors and the like are in International Class 10, impact sensors in the nature of frontal protection safety systems comprised of frontal impact sensors, sensors for land vehicles and the like are in International Class 12 and bite sensors and the like are in International Class 28.

The wording "tension sensors" in the identification of goods and/or services in International Class(es) 9 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "feedback devices in the nature of tension sensors, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

The wording "wearable computer peripherals," "wearable computers" and "electronic machines, apparatus and their parts" in the identification of goods and/or services in International Class(es) 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, electronic label printing machines for commercial use and the like are in International Class 7, wearable computer peripherals in the nature of wireless mice, smartwatches, electronic apparatus for testing compression, strength, hardness and tensile characteristics of industrial materials and the like are in International Class 9, electronic light therapy apparatus for the skin and the like are in International Class 10, electronic franking machines and the like are in International Class 16, wearable computers in the nature of activity trackers sold as integral components of running shoes and the like are in International Class 25, wearable computer peripherals in the nature of gaming mice, electronic educational game machines for children and the like are in International Class 28, etc.

The wording "measuring equipment (sensors)" and "ultrasonic detectors" in the identification of goods and/or services in International Class(es) 9 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "microsensors for measurement of pressure, acceleration, force and flow, namely, silicon piezoresistive pressure sensors, ultrasonic {indicate property or phenomenon, e.g., flaw, etc.} detectors, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

The wording "safety restraints, other than for vehicle seats and sports equipment" in the identification of goods and/or services in International Class(es) 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, fall protection equipment for fall restraint and fall arrest, namely, lanyards and the like are in International Class 9, patient safety restraints and the like in International Class 10, etc.

The wording "protection devices for personal use against accidents," "diagnostic apparatus, not for medical purposes," "security surveillance apparatus" and "sensors for security surveillance apparatus" in the identification of goods and/or services in International Class(es) 9 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "nets, apparatus for the detection of pathogens for laboratory or research use, electric and electronic video surveillance installations, electric sensors for electric and electronic video surveillance installations, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

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 of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Class(es) 9 only, the class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

- Class 10

The wording "medical apparatus and instruments" in the identification of goods and/or services in International Class(es) 10 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, medical laboratory research instruments and the like are in International Class 9, and medical apparatus and instruments for monitoring oxymetory, gas analysis and vital signs and the like are in International Class 10.

The wording "measuring or testing machines and instruments for medical use," "sensors [measurement apparatus] for medical use," "body temperature monitors," "urine output monitors," "brain waves monitors" and "electroencephalogram monitoring devices" in the identification of goods and/or services in International Class(es) 10 is indefinite, too broad and must be clarified because it is not clear what the goods and/or services are, i.e., "eye testing machines and apparatus, arterial blood pressure apparatus, sensors for medical use to be worn by a human to gather biometric data and also including {indicate other goods sold as a unit with the sensors, e.g., an accelerometer, etc.}, electric body temperature monitors for medical use, urine output monitors for medical use, brain waves monitors for medical use, electroencelphalogram monitoring devices for medical use, etc." See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

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 of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Class(es) 10 only, the class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

Applicant may adopt the following wording in International Class(es) 9 and 10, if accurate:

"Personal security alarms; burglar alarms; personal security alarms and burglar alarms with sensors; electric sensors for burglar alarms; alarm sensors; sensors for measuring chemical levels in aqueous solutions ~~[measurement apparatus]~~, other than for medical use; optical inspection apparatus for industrial use, namely, for inspection of textiles using sensors; timing sensors; touchscreen sensors; liquid level sensors; pressure sensors; sheet tactile sensors for measuring pressure distribution; LED position sensors; sensors for determining position; displacement sensors for measuring distance; security sensors for detecting intruder motion; vibration sensors; thermal sensors for human detection, namely, heat sensors for detecting the presence of humans; measuring or testing machines and instruments in the nature of textile testing and level measuring machines; motion detectors; sensors for measuring concentrations of chemicals in water or textile testing machines and instruments; projected capacitive touch sensors; motion sensors in the nature of a vehicle mounted GPS sensor for determining the rate of motion for a vehicle; vibration sensors for installation in windmill housings; motion sensors for security lights; insulated copper wire; electronic components, namely, piezoelectric switches; ultrasonic sensors; impact sensors, namely, helmet-mounted electronic sensors that detect and measure impacts to the head; tactile sensors; temperature sensors; feedback devices in the nature of tension sensors; proximity sensors; wearable computer peripherals in the nature of wireless mice; wearable computers in the nature of smartwatches; wearable personal digital assistants (PDAs) ~~[PDAs]~~; smartwatches; smartglasses; electronic machine and apparatus for testing compression, strength, hardness and tensile characteristics of industrial materials and their replacement parts; measuring equipment in the nature of microsensors for measurement of pressure, acceleration, force and flow, namely, silicon piezoresistive pressure (sensors); electric wires and cables; ultrasonic flaw detectors; safety restraints, other than for vehicle seats and sports equipment in the nature of fall protection equipment for fall restraint and fall arrest, namely, lanyards; protection devices in the nature of nets for personal use for protection against accidents; diagnostic apparatus, not for medical purposes for the detection of pathogens for laboratory or research use; security surveillance apparatus in the nature of electric and electronic video surveillance installations; electric sensors for security surveillance apparatus in the nature of electric and electronic video surveillance installations; ultrasonic level meters; ultrasonic underwater wireless receivers; ultrasonic underwater wireless transmitters," in International Class 9; and

"Medical apparatus and instruments for monitoring oxymetory, gas analysis, vital signs, blood properties and respiratory events; telemetry devices for medical applications; measuring or testing machines and instruments for medical use in the nature of arterial blood pressure apparatus and eye testing machines and apparatus; respiration monitors; fetal pulse monitors; pulse meters; pulse rate monitors; pulse measuring devices; heart rate monitors; sensors ~~[measurement apparatus]~~ for medical use to be worn by a human to gather human biometric data and also including an accelerometer; medical apparatus and instruments for monitoring vital signs, blood properties and respiratory events; blood pressure measuring apparatus; medical apparatus and instruments for monitoring vital signs, namely body temperature, pulse rate, heart rate, respiratory rate, blood pressure, urine output and brain waves; electric body temperature monitors for medical use; urine output monitors for medical use; brain waves monitors for medical use; electroencephalogram monitoring devices for medical use," in International Class 10.

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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 and/or services 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 and/or services 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.

SIGNIFICANCE OF THE MARK – Inquiry

To permit proper examination of the application, applicant must explain whether the wording in the mark “PIEZOLA” has any significance in the electronic device, research and/or medical trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. 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

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

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.

/Erin Z. Dyer/

Erin Zaskoda Dyer

Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

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.