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. 79261673
Mark: MENTOR
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Correspondence Address: London WC1X 8NL, United Kingdom
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Applicant: Nidec Control Techniques Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1473896
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
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).
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
IDENTIFICATION OF GOODS – Particular Goods Only
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Class 7
The wording "Drives, motors, power conversion equipment and industrial controls" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "AC drives and motors" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "servo drives and motors" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "DC drives and motors" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "drives for manufacturing automation" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "systems comprised of electrical AC, DC or servo drives, motors and controllers for controlling industrial and commercial machines and apparatus" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "encoders and resolvers for use on machines" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "gearboxes for speed, torque and position control" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
Class 9
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Furthermore, the wording "software for the operation and control of power electronic drives, servos and converters" is indefinite and must be clarified to specify that the goods are "downloadable", if accurate.
The wording "software for configuring, monitoring, analysing, regulation of and interface with power electronic drives, servos and converters" is indefinite and must be clarified to specify that the goods are "downloadable", if accurate.
The wording "motion control instrumentation" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "programmable logic control instrumentation" is indefinite and must be clarified to specify the nature of the goods, e.g., "programmable logic controller (PLC).
The wording "speed and position feedback devices" is indefinite and must be clarified to specify the nature of the goods, e.g., "electronic resolvers", etc.
The wording "motion controllers" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 may be classified in several international classes, any modification to this wording must identify goods in International Class 9 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).
Additionally, the wording "safety devices" is indefinite and must be clarified to specify the nature of the goods, e.g., "flashing and steady safety lights", etc.
The wording "electric filters" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "electric filters for the suppression of electrical noise and radiation" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "photovoltaic grid-tie inverters, string connection boxes, shelter, transformer and switchgear" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "programmable logic controllers, power converters, motion controllers, machine controllers, human machine interfaces" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "safety devices for industrial converters and controllers" is indefinite and must be clarified to specify the nature of the goods, e.g., "flashing safety lights", etc.
The wording "input/output switches and industrial PCs, remote terminals units" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.
The wording "industrial sensors" is indefinite and must be clarified to specify what is being sensed, e.g., "pressure", "temperature", etc.
Applicant may adopt the following identification, if accurate:
Class 7: Drives for motors, motors other than for land vehicles, power conversion equipment in the nature of torque converters other than for
land vehicles, and industrial hydraulic controls for machines, motors and engines; AC drives for motors
and AC servo motors; servo drives for motors and motors, other than for land vehicles; DC drives for motors and motors, other than for land vehicles; drives for motors for manufacturing automation; systems comprised of
electrical AC, DC or servo drives for motors, motors other than for land vehicles, and hydraulic controllers for
controlling industrial and commercial machines and apparatus in the nature of motors and engines; drives for machines; permanent magnet motors; linear motors; encoders
and resolvers being parts of for use on machines; gearboxes, other than for land vehicles, for speed, torque and
position control; starters for electric motors; parts and fittings for all the aforesaid goods
Class 9: Downloadable
software for {specify function}; downloadable software for the operation and control of power electronic drives, servos and converters:; downloadable software for configuring, monitoring, analysing, regulation of and interface with power electronic drives, servos and converters;
electronic controllers for motors and machine tools; electronic positioning controllers for servo motors; servo amplifiers; motion control instrumentation, namely, remote
controls for controlling the motion of {indicate
specific devices}; programmable logic control instrumentation, namely, programmable logic controller (PLC); speed and position feedback devices,
namely, electronic resolvers; motion controllers, namely, remote controls for controlling the motion of {indicate specific devices}; electrical drives, namely, {specify goods in
Class 9}; programmable electrical AC, DC and servo drives for controlling industrial and commercial machines and apparatus, namely, {specify goods in
Class 9}; starters for electric motors; electric inverters; safety devices, namely, flashing and steady safety lights; electric cables; electric filters, namely, low pass inductor filter used in high power electrical applications; electric filters in the nature of low pass inductor filter used in high power
electrical applications for the suppression of electrical noise and radiation; photovoltaic grid-tie inverters, string connection boxes in the nature of
switchboards, shelter in the nature of
{specify}, electric transformer and switchgear; programmable logic controllers, electric power converters, motion
controllers in the nature of remote controls for controlling the motion of {indicate specific devices}, machine controllers
in the nature of electronic control systems for machines, human machine interfaces for computers; safety devices for industrial converters and
controllers, namely, flashing safety lights; electric input/output switches and industrial PCs in the nature of
computers, remote computer terminals units; industrial temperature sensors; parts and fittings for all of the aforesaid
goods
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in the United Kingdom, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action
/Bianca Allen/
Trademark Examining Attorney
Law Office 123
(571) 272-5667
bianca.allen@uspto.gov
RESPONSE GUIDANCE