Offc Action Outgoing

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.

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).

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 and Services

· U.S. Attorney Required

IDENTIFICATION OF GOODS AND SERVICES

International Class 7:

The identification for “elevators and elevator systems” in International Class 7 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).

Applicant may adopt the following wording in International Class 7, if accurate: elevators and elevator systems comprised of motors, gears, doors, and belts.

The wording “moving platforms”, “moving stairways”, and “elevator destination entry device” is indefinite and must be clarified because it is unclear what kind of goods applicant is referencing. 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.

Applicant may substitute the following wording, if accurate: “elevating work platforms; escalators; elevator destination entry device, namely, {clarify specifically what this good is, e.g. elevator platforms}”

The wording “escalators and related carriers” in the identification of goods in International Class 7 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods 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, moving staircases are in International Class 7 and patient moving devices are in International Class 10.

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 7 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).

Applicant may adopt the following wording in International Class 7, if accurate: escalators and related carriers, namely, elevators, hoists, and stair lifts.

The wording “lifts, other than ski lifts” is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a). Applicant may substitute the following wording, if accurate: lifts, namely, {indicate specific lifts, e.g. stair lifts, car lifts, wheel chair lifts for use in the home, mechanical and hydraulic lifts}

Also, the wording “elevator operating apparatus” is indefinite because it is unclear what specific types of apparatus applicant is referencing. Applicant must specify the types of apparatus it is providing.

Lastly, the identification for “parts and fittings for all the aforesaid goods” must be clarified because it is indefinite and does not make clear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. However, while the word “parts and fittings for all the aforesaid goods” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a). Additionally, the wording “parts therefor” alone is acceptable when it follows a definite identification for machines in International Class 7. Id.

Applicant may amend the identification to add this language to the end of every acceptable machine identification in International Class 7.

In summary, applicant may adopt the following wording, if accurate:

International Class 7: Conveyors being machines, and parts and fittings for all the aforesaid goods; elevators and elevator systems comprised of motors, gears, doors, and belts parts and fittings for all the aforesaid goods; moving pavements being machines and parts and fittings for all the aforesaid goods; elevating work platforms being machines and parts and fittings for all the aforesaid goods; escalators and related carriers namely, {indicate type of goods, e.g. elevators, hoists, and stair lifts}; lifts, namely, {indicate specific lifts, e.g. stair lifts, car lifts, wheel chair lifts for use in the home, mechanical and hydraulic lifts} and parts and fittings for all the aforesaid goods; hoists and parts and fittings for all the aforesaid goods; escalators and parts and fittings for all the aforesaid goods; elevator destination entry device, namely, {clarify specifically what this good is, e.g. elevator platforms}; elevator operating apparatus, namely, {indicate specific apparatus, e.g. gears, motors, etc}; including all of the aforesaid goods capable of being connected to the Internet

International Class 9:

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.

The identification for “elevator control apparatus and software including for mobile phones” in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).

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).

Applicant may adopt the following wording, if accurate: elevator control apparatus and downloadable software including for mobile phones, namely, {indicate specific use or purpose for the software, e.g. performance controllers for monitoring elevator functions}.

Also, the wording “equipment” and “apparatus” is also indefinite and must be clarified as indicated in bold italics below. Generally applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name. See TMEP §1402.03(a). Applicant must also specify the field of use in which the servics are used or intended to be used, or the specific purpose of the services. See TMEP §1402.01.

In summary, applicant may adopt the following wording, if accurate:

International Class 9: Operating, monitoring, remote monitoring, and control apparatus and instruments for {indicate purpose or function, e.g. escalators, elevators, hoists, etc}; computers, micro-computers and computer monitors; video and camera equipment namely, {indicate type of equipment, e.g., cables, transformers, keypads}; wireless communication apparatus namely, {indicate specific kind of apparatus, e.g. antennas, devices for voice, data or image transmission, amplifiers, etc.}, sensors, detectors and alarms, all for use in conveyors, elevators, moving pavements, moving platforms, escalators and related carriers for the operation, control or servicing thereof, including such goods which can also provide news and entertainment, namely, {indicate specific goods, e.g. television monitors}, diagnostic information, elevator position information and emergency information; elevator call controls; elevator floor selection controls; elevator control apparatus and downloadable software including for mobile phones, namely, {indicate specific use or purpose for the software, e.g. performance controllers for monitoring elevator functions}; devices for calling, monitoring and controlling elevators, escalators, moving walkways, moving platforms and hoists; parts and fittings for all of the aforesaid goods, namely, {specify the parts and fittings}; including all of the aforesaid goods capable of being connected to the Internet and to each other

International Class 37:

The wording “maintenance of electronic equipment” in International Class 37 must be clarified because it is indefinite and does not specify either the common generic name of each piece of equipment or the nature and purpose or function of the equipment. See TMEP §§1402.01, 1402.03. Therefore, applicant must amend this wording to specify either (1) the common generic name of each piece of equipment or (2) the nature and purpose or function of the equipment. See TMEP §§1402.01, 1402.03. Applicant may adopt the following identification, if accurate: Maintenance of electronic apparatus.

International Class 42:

The wording “Monitoring of conveyors (machines), elevators, moving walkways, moving platforms (machines), escalators, lifts, hoists and moving stairways, including for safety, location and maintenance purposes” is indefinite because it is unclear what specific service applicant is providing. Applicant may adopt the following wording, if accurate: Monitoring of conveyors being machines, elevators, moving walkways, moving platforms being machines, escalators, lifts, hoists and moving stairways, to ensure proper functioning taking into account safety, location and maintenance considerations;

The identification of goods and services contains parentheses. 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 from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

In summary, applicant may adopt the following language, if accurate (suggestions in bold, comments in bold italics):

International Class 7: Conveyors (being machines) and parts and fittings for all of the aforesaid goods; elevators and elevator systems comprised of motors, gears, doors, and belts and parts and fittings for all of the aforesaid goods; moving pavements (being machines) and parts and fittings for all of the aforesaid goods; ~~moving~~ elevating work platforms (being machines) and parts and fittings for all of the aforesaid goods; escalators and related carriers namely, {indicate type of goods, e.g. elevators, hoists, and stair lifts}; lifts, namely, {indicate specific lifts, e.g. stair lifts, car lifts, wheel chair lifts for use in the home, mechanical and hydraulic lifts} ~~other than ski-lifts~~; hoists; ~~moving stairways~~ escalators and parts and fittings for all of the aforesaid goods; elevator destination entry device, namely, {clarify specifically what this good is, e.g. elevator platforms}; elevator operating apparatus, namely, {indicate specific apparatus, e.g. gears, motors, etc; ~~parts and fittings for all the aforesaid goods~~; including all of the aforesaid goods capable of being connected to the Internet

International Class 9: Operating, monitoring, remote monitoring, and control apparatus and instruments for {indicate purpose or function, e.g. escalators, elevators, hoists, etc}; computers, micro-computers and computer monitors; video and camera equipment namely, {indicate type of equipment, e.g., cables, transformers, keypads}; wireless communication apparatus namely, {indicate specific kind of apparatus, e.g. antennas, devices for voice, data or image transmission, amplifiers, etc.},; sensors, detectors and alarms, ; all for use in conveyors, elevators, moving pavements, moving platforms, escalators and related carriers for the operation, control or servicing thereof, including such goods which can also provide news and entertainment, namely, {indicate specific goods, e.g. television monitors}, diagnostic information, elevator position information and emergency information; elevator call controls; elevator floor selection controls; elevator control apparatus and downloadable software including for mobile phones, namely, {indicate specific use or purpose for the software, e.g. performance controllers for monitoring elevator functions}; devices for calling, monitoring and controlling elevators, escalators, moving walkways, moving platforms and hoists; parts and fittings for all of the aforesaid goods, namely, {specify the parts and fittings}; including all of the aforesaid goods capable of being connected to the Internet and to each other

International Class 37: Installation, servicing, maintenance, repair, modification and renovation services, all relating to conveyors (being machines), elevators, moving walkways, moving platforms (being machines), escalators, lifts, hoists and moving stairways; maintenance of electronic apparatus ~~equipment~~; information, advice and consultancy in respect of all of the aforesaid services; including all of the aforesaid services being provided as a result of Internet communication between devices

International Class 42: Monitoring of conveyors being machines, elevators, moving walkways, moving platforms being machines, escalators, lifts, hoists and moving stairways, ~~including,~~ to ensure proper functioning taking into account safety, location and maintenance considerations; diagnosing performance problems in the field of {indicate specific field of use or purpose} utilizing electronic equipment; information, advice and consultancy in respect of all of the aforesaid services; including all of the aforesaid services being provided as a result of Internet communication between devices

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.

RESPONSE GUIDELINES

Response guidelines. For this application to proceed, 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.

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.

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). 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 submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, 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).

How to respond. Click to file a response to this nonfinal Office action

Sasha Boshart Rios

/Sasha Boshart Rios/

Trademark Examining Attorney

Law Office 125

P: (571)272-2616

Sasha.Rios@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 an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

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