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 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
Mark Description Required
U.S. Counsel Required

IDENTIFICATION OF GOODS

In regards to International Class 7

The wording “units and apparatus for movement transmission for any application”, “gear attachments”, and “reduction gears” in the identification of goods is indefinite and must clarify that the identified goods in Class 7 are mechanical or hydrolytic in nature and not intended for land vehicles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Further, the wording “joints” in the identification of goods in Class 7 is indefinite and must be clarified to indicate the nature of the joints in Class 7. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, in Class 7, joints may be identified as machine parts for connecting sliding strips, plates, and guides.

Further, the wording “chains being parts of machines” in the identification of goods in Class 7 is indefinite and must be clarified to indicate the type of chains. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, chains being parts of machines in Class 7 could include roller chains, elevator chains, etc.

In regards to International Class 9

The wording “Electronic apparatus and instruments” in the identification of goods in Class 9 is indefinite and must be clarified because it is unclear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, the wording could include digital inverters, electronic servo motor controls, etc. in Class 9.

The identification for software 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).

Additionally, the wording “electronic components for controlling and monitoring motors” in the identification of goods in Class 9 is indefinite and must be clarified to specify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, electronic components for controlling and monitoring motors could include electronic controls for motors, piezoelectric switches, etc. in Class 9

Further, the wording “electric reducers” in the identification of goods is indefinite and must be clarified to identify the nature or type of electric reducers. See 37 C.F.R. §2.32(a)(6)

In regards to International Class 12

The wording “brakes” in the identification of goods in International Class 12 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, breaks for land vehicles are in International Class 12 and breaks for machines are in International Class 7.

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

Applicant may substitute the following wording, if accurate:

Class 7: Mechanical and hydraulic units and apparatus for movement transmission for any application namely, reduction gears other than for land vehicles, motor reducers, variable-speed reducers, and components thereof; Machine parts, namely, joints for connecting sliding strips, plates, and guides ; hoists; attachments for gear motors not for land vehicles ; {specify type of chains, e.g., roller, elevator, etc.}chains being parts of machines

Class 9: Electronic apparatus and instruments, namely, {specify electronic apparatus and instruments, e.g., digital inverters, electronic servo motor controls, etc.}; {specify downloadable or recorded} monitoring software for {specify function, e.g., monitoring performance of} machines and machine-tools and motors; electronic components for controlling and monitoring motors, namely, {specific type of electronic controls and components, e.g., electronic controls for motors, piezoelectric switches, etc.}; converters and controllers for electronic frequencies for applications using electric motors; electric reducers in the nature of {applicant must specify type/function of reducer}

Class 12: Driving motors for land vehicles; brakes for land vehicles; couplings for land vehicles; speed change gears for land vehicles

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.

MARK DESCRIPTION REQUIRED

Applicant must submit a description of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. In this case, the drawing of the mark is not in standard characters.

The following description is suggested, if accurate: The mark consists of the wording “OK”, with a diamond shape interlocking the “O” and “K”

U.S. COUNSEL REQUIRED

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. The application record indicates that applicant’s domicile is outside of the United States in Italy, 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 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).

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

/Rio Toplak/

Examining Attorney

Law Office 127

(571) 272-6572

Rio.Toplak@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.