Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive Applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  April 13, 2020

 

International Registration No. 1473896

 

Notice of Provisional Partial Refusal

 

Discussion of provisional partial refusal.  This is a provisional partial 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).  This refusal applies to only the following goods in International Classes 7 and 9 in the U.S. application: 

 

Class 7 – Drives for motors, motors other than for land vehicles, power conversion equipment namely, electric motor drive systems to control the speed, position and torque control apparatus for AC and DC motors and industrial electrical controls for machines, motors and engines; systems comprised of electrical AC, DC or servo drives for motors, motors other than for land vehicles and electrical controllers for controlling industrial and commercial machines and apparatus in the nature of motors, engines and industrial automation; encoders and resolvers being parts of machines; parts and fittings for all the aforesaid goods

 

Class 9 – Electrical drives, namely, electrical drives for motors; programmable electrical AC, DC and servo drives for controlling industrial and commercial machines and apparatus, namely, motors and industrial automation equipment; safety devices for industrial converters and controllers, namely, safety protectors for converters or current controllers which monitor the operating conditions of motors and adjust the current to the motor to continue safe operation; photovoltaic grid-tie inverters, string connection boxes in the nature of switchboards, shelters in the nature of electrical shelter boxes to protect electricals from dust and moisture, electrical transformer and switchgear; electric input/output switches and industrial PCs in the nature of components, remote computer terminals units; parts and fittings for all the aforesaid goods

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned Trademark Examining Attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on August 12, 2019 in connection with this application.  The assigned Trademark Examining Attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, although certain portions of the identification required amendment in the previous Office action, additional entries of the identification require amendment as set forth below.

 

The Trademark Examining Attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Further, the following requirement is SATISFIED:  U.S.-licensed attorney appointed.  See TMEP §713.02.

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

 

• Partial Requirement – Amended Identification of Goods Required

 

Also contained herein is a Partial Abandonment Advisory.

 

Applicant must respond to the issue raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If Applicant does not respond within this time limit, the application will be partially abandoned.  37 C.F.R. §2.65(a).

 

PARTIAL REQUIREMENT – AMENDED IDENTIFICATION OF GOODS REQUIRED

 

The stated requirement pertains only to the goods specified herein and does not bar registration of the remaining goods.

 

The wording “Drives for motors, motors other than for land vehicles, power conversion equipment namely, electric motor drive systems to control the speed, position and torque control apparatus for AC and DC motors and industrial electrical controls for machines, motors and engines; systems comprised of electrical AC, DC or servo drives for motors, motors other than for land vehicles and electrical controllers for controlling industrial and commercial machines and apparatus in the nature of motors, engines and industrial automation; encoders and resolvers being parts of machines; parts and fittings for all the aforesaid goods” in the identification of goods is indefinite and must be clarified because the Applicant must specify the major components of the systems, the use for the drives and motors and indicate the type of parts and fittings by common commercial terms. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, Applicant must describe the product, its main purpose, and its intended uses.  See id.

 

In addition, particular wording in the proposed amendment to the identification is sufficiently definite but is not acceptable because the change in classification of such goods exceeds the scope of the identification in the initial application, as assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  See 37 C.F.R. §§2.71(a), 2.85(d), (f); TMEP §§1401.03(d), 1402.07(a), 1904.02(b)-(c), (c)(iv).  The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau.  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See TMEP §§1402.07(d), 1904.02(c)(iv). 

 

Specifically, Applicant amended the wording “electrical drives” in International Class 9 to “electrical drives namely electrical drives for motors”.  Applicant also amended the wording “programmable electrical AC, DC and servo drives for controlling industrial and commercial machines and apparatus” in International Class 9 to “programmable electrical AC, DC and servo drives for controlling industrial and commercial machines and apparatus, namely motors and industrial automation equipment”. However, these revised goods are normally classified in a different international class; i.e., International Class 7.  Thus, the proposed amendment is beyond the scope of the original identification because it references goods in a class different from that originally assigned by the International Bureau.

 

Applicant may respond by deleting the goods in International Class 9.  See TMEP §1904.02(c)(iv).  However, once an application has been expressly amended to delete goods, those items generally may not later be re-inserted.  See TMEP §1402.07(e). 

 

If Applicant believes classification by the International Bureau was in error, Applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration.  TMEP §1904.02(c)(iv), (e)(i)-(e)(ii).  However, filing such a request with the International Bureau is not considered a formal response to this Office action.  See TMEP §1904.02(c)(iv), (e)(iii).  Applicant must also file a timely and complete response to this Office action, stating that Applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).  The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances.  See TMEP §§716.02(g), 1904.02(c)(iv). 

 

Further, the wording “safety devices for industrial converters and controllers, namely, safety protectors for converters or current controllers which monitor the operating conditions of motors and adjust the current to the motor to continue safe operation; photovoltaic grid-tie inverters, string connection boxes in the nature of switchboards, shelters in the nature of electrical shelter boxes to protect electricals from dust and moisture, electrical transformer and switchgear; electric input/output switches and industrial PCs in the nature of components, remote computer terminals units; parts and fittings for all the aforesaid goods” in the identification of goods is indefinite and must be clarified because Applicant must clarify whether the goods are electric in nature and the type of safety devices, shelters, PCs, and parts and fittings by common commercial terms.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, Applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Additional portions of wording in the identification of goods are unacceptable because they contain over-broad or indefinite language. Thus, the goods may encompass more than one international class and the nature of the goods is unclear, as set forth below. The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A , 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA , 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A , 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am . , 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

The following guidelines are provided for amending the identification:

 

·         Use common commercial or generic names for the goods whenever possible. If there is no common commercial or generic name, describe the product and intended consumer as well as the main purpose and intended uses of the goods (TMEP § 1402.01);

·         Use “namely” after broad terms (e.g., “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products”) followed by a list of the specific goods, e.g., “accessories, namely, [list specific goods]” (TMEP §§ 1402.01, 1402.03(a));

·         Use commas (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods (TMEP § 1402.01(a));

·         Use semicolons to separate a distinct category of goods within an International Class (TMEP § 1402.01(a)).

 

Overall Identification

 

Applicant may adopt the following form of identification, if accurate:

 

Class 7 – Drives for motors, motors other than for land vehicles, power conversion equipment namely, electric motor drive systems comprising {specify major components, e.g., two or more synchronous motors coupled through clutches} to control the speed, position and torque control apparatus for AC and DC motors and industrial electrical 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; motor drive systems comprised of electrical AC, DC or servo drives for motors, motors other than for land vehicles and electrical controllers for controlling industrial and commercial machines and apparatus in the nature of motors, and engines, and all for use in industrial automation; drives for machines; permanent magnet motors; linear motors; encoders and resolvers being parts of machines motors, other than for land vehicles; gearboxes other than for land vehicles for speed, torque and position control; starters for electric motors; structural replacement parts and fittings for all the aforesaid goods

 

Class 9 – 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 AC motors, DC motors, and Servo motors, other than for land vehicles; 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 AC motors, DC motors, and Servo motors, other than for land vehicles; electrical drives namely electrical drives for motors; programmable electrical AC, DC and servo drives for controlling industrial and commercial machines and apparatus, namely motors and industrial automation equipment; electric inverters; safety devices for industrial converters and controllers, namely, safety protectors being electric switch housings for converters or electric current controllers which monitor the operating conditions of motors and adjust the current to the motor to continue safe operation; electric cables; electric filters namely, low passing duct to filter use in high power electrical apparatus; electric filters in the nature of low pass induction 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, shelters in the nature of electrical shelter boxes connector housings to protect electricals electrical connectors from dust and moisture, electrical transformer and switchgear; programmable logic controllers, electric power converters, motion controllers namely, remote controls for controlling the motion of AC motors, DC motors, and Servo motors, other than for land vehicles, machine controllers in the nature of the electronic control systems for machines, human machine interfaces for computers; electric input/output switches and industrial PCs in the nature of components computers, remote computer terminals units; industrial sensors namely, those which measure speed and position feedback of electronic motors; structural replacement parts and fittings for all the aforesaid goods

 

Scope Advisory

 

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).

 

ID Manual Online

 

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. Applicant is strongly encouraged to consult the ID Manual.

 

PARTIAL ABANDONMENT ADVISORY

 

Failing to respond to this provisional refusal Office action will result in partial abandonment of the U.S. application.  If Applicant does not respond within the six-month period, the goods identified above, to which this provisional refusal applies, will be deleted from the application.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

In such case, the application will then proceed only with the following goods: 

 

Class 7 –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; drives for machines; permanent magnet motors; linear motors; gearboxes other than for land vehicles for speed, torque and position control; starters for electric motors

 

Class 9 – 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 AC motors, DC motors, and Servo motors, other than for land vehicles; 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 AC motors, DC motors, and Servo motors, other than for land vehicles; electric inverters; electric cables; electric filters namely, low passing duct to filter use in high power electrical apparatus; electric filters in the nature of low pass induction filter used in high power electrical applications for the suppression of electrical noise and radiation; programmable logic controllers, electric power converters, motion controllers namely, remote controls for controlling the motion of AC motors, DC motors, and Servo motors, other than for land vehicles, machine controllers in the nature of the electronic control systems for machines, human machine interfaces for computers; industrial sensors namely, those which measure speed and position feedback of electronic motors

 

HOW TO RESPOND

 

For this application to proceed, Applicant must explicitly address each requirement in this Office action.  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.

 

Click to file a response to this nonfinal Office action.

 

ASSISTANCE

 

Please call or email the assigned Trademark Examining Attorney with questions about this Office action.  Although the Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or Notice of Appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect Applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 13, 2020 for

U.S. Trademark Application Serial No. 79261673

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”