United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79270415
Mark: AQUA-X
|
|
|
Correspondence Address: BARTELS UND PARTNER, PATENTANWÄLTE
|
|
|
Applicant: HYDAC FILTERTECHNIK GMBH
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
International Registration No. 1494599
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.
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 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:
ISSUE REGARDING APPLICANT’S ENTITY TYPE
Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.
To provide this entity information using the Trademark Electronic Application System (TEAS) Response to Office Action form, applicant must open the response form, answer “Yes” to wizard question number 5, find the “Owner Information” page, and do the following: (1) locate the “Entity Type” heading on that page and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.
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.
Additionally, 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.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Furthermore, the wording of the identification of the goods contain many indefinite and/or broad wording and must be clarified to further indicate the nature and purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01; See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
A summary of the problematic wording in the identification of goods is included below for applicant’s convenience.
|
Class |
Problematic Wording |
Reason Unacceptable |
Suggestion |
|
6 |
Fittings for attaching of fluid separators, oil mist separators, reservoirs, filters, valves and control blocks and of gas, liquid and electric conduits; fittings for gas and liquid apparatus, for fluid and oil mist separators and for gas or liquid conduits of metal; fastening elements; clips of all kinds; hose couplings and connections, flexible tubes of metal; connecting branches and screw couplings, and adapters and sealing caps; storage tanks, including hydraulic tanks; housings and parts therefor, in particular in the form of separator housings, storage housings, filter housings and valve blocks |
This wording is indefinite because the nature of the goods are unclear. |
Fittings of metal for attaching of fluid separators, oil mist separators, reservoirs, filters, valves and control blocks and of
gas, liquid and electric conduits; fittings of metal for gas and liquid apparatus, for fluid and oil mist separators and for gas or liquid conduits of metal; fastening
elements namely, metal bars and chains; metal clips of all kinds for general use; metal hose couplings for use with
{indicate type of hose} and metal pipe connections; |
|
7 |
Fluid technology, gas technology, lubrication technology and separation technology systems and components of all kinds, included in this class, namely, for use in the automotive industry, including mobile hydraulics, the semiconductor industry, the food industry, aeronautics and space travel, medicine, pharmacy, oil and gas transport technology, environmental engineering, laboratory and testing technology, household systems and sanitation technology; fluid technology, gas technology, lubrication technology and separation technology systems and components of all kinds, included in this class, namely, for use in mining and in the field of steelworks, power plants, wind power installations, machine tools, transfer presses and plastic injection moulding machines, including lubricating oil installations for turbines, including gas, steam or water turbines; recovery devices for lubricating oils; filtration devices and filters, being parts of machines, for filtration and separation technologies, usable for all technical, chemical, biological, and process engineering applications; replacement parts for the aforesaid goods; coalescers, high-pressure, medium-pressure and low-pressure filters, liquid filters, pipe filters and process pipe filters, gas filters, including for seal gas systems, cyclone filters and other separating filters, all of the aforesaid being parts of machines; inflow pressure and circulating pressure balances, flow control valves, priority valves, shuttle valves, seat valves and slide valves, throttle valves and throttles, diaphragms, directional control valves, non-return valves, pressure valves, pressure control valves and pressure limiting valves, optionally with indicators and monitors, vent valves; control apparatus, in particular electric, electro-mechanical and electro-hydraulic control apparatus (included in this class); lubricating apparatus and equipment, lubricating installations, liquid separators, including oil mist separators, supply apparatus, in particular distributors for stationary and mobile applications; mechanically operated clamping apparatus, clamping machines and clamping tools; electric motors, including frequency-regulated motors; single and multi-stage compressors; blowing machines; electric, hydraulic and electro-hydraulic actuators for all types of transmissions, in particular for variable speed motors; separation devices and filter devices as well as filters for lubrication systems, in particular for turbines such as gas motors, steam motors or hydro motors, as well as spare parts for these goods
|
This wording is indefinite because the nature of the goods are unclear. |
Fluid technology, gas technology, lubrication technology and separation technology systems and components in each case being machines or
parts of machines
|
|
11 |
Separation devices and filter devices as well as filters for heating, steam-generating, refrigerating, drying, ventilating, water supply, water treatment, air-conditioning, and sanitary installations and apparatus; spare parts for the aforesaid goods; coalescers, high-pressure, medium-pressure and low-pressure filters, liquid filters, line filters and process line filters, gas filters, including for seal gas systems, cyclone filters and other separating filters, filling filters and ventilation filters, full flow filters and bypass filters, multistage filters, return flow filters, including suction filters and return flow suction filters, tank-integrated filters, including ventilating and drying devices, drum filters and strip winding filters, perforated plate filters and screen filters, offline filters and in line filters and spin-on filters, plastic melt filters, membrane filters, filter units together with draining apparatus; filter elements, perforated plate and screen filter elements, gap-type tube filter elements, rheological filter elements, flow filter elements, filter candles, filter cartridges, filter housings, filter discs and disc filter elements, filter mats, filter pots, filter cloths, filter bags, filter strips, filter packets and deep filter elements, including filter fabric materials; separating devices for separating liquids in relation to oil/water mixtures; heat exchangers for stationary and mobile applications for exchanging heat between liquid and/or gaseous media; cooling and heating installations for media therein |
This wording is indefinite because the nature of the goods are unclear. |
|
For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with any material changes highlighted in bold and underline type and any deletions strikethrough. Applicant may adopt the following identification, if accurate
Class 6: Fittings of metal for attaching of fluid separators, oil mist separators, reservoirs,
filters, valves and control blocks and of gas, liquid and electric conduits; fittings of metal for gas and liquid apparatus, for fluid and oil mist separators and for gas
or liquid conduits of metal; fastening elements namely, metal bars and chains; metal clips of all kinds for general use; metal hose couplings
for use with {indicate type of hose} and metal pipe connections; , flexible
tubes of metal; connecting branches in the nature of metal supports for couplings for liquid and gas conduits and screw couplings, and adapters and sealing caps;
metal storage tanks, including namely hydraulic tanks; metal housings and
parts therefor, in particular in the form of separator housings, storage housings, filter housings and valve blocks for gas and liquid circuits
Class 7: Fluid technology, gas technology, lubrication technology and separation technology systems and components in each case being machines or parts of machines of all kinds, included in this class, namely, for use in the automotive industry, including for mobile hydraulics, the semiconductor industry, the food industry, aeronautics and space travel, medicine, pharmacy, oil and gas transport technology,
environmental engineering, laboratory and testing technology, household systems and sanitation technology; fluid technology, gas technology, lubrication technology and separation technology systems
and components in each case being machines or parts of machines of all kinds, included in this class, namely, for use in mining and in
the field of steelworks, power plants, wind power installations, machine tools, transfer presses and plastic injection moulding machines, including for lubricating oil installations for turbines, in particular including gas, steam or water turbines; hydropneumatic storage units being machine
parts; piston accumulators, bubble memory devices, diaphragm accumulators, bellows accumulators, spring accumulators, in each case being parts of machines and accumulator installations consisting of
such accumulators, being parts of machines, including in the field of offshore and deep sea applications; hydraulic, hydropneumatic and reflective sound, vibration
and pressure dampers, resonators, silencers, in each case being parts of machines; separators, including namely oil mist separators;
recovery devices for lubricating oils, namely, lubricating machines; air, oil and water filter apparatus and filtration devices
and filters, being parts of machines, for filtration and separation technologies, usable for all technical, chemical, biological, and process engineering applications; replacement parts
for the aforesaid goods, namely {specify commercial name of Class 7 goods}; coalescers, high-pressure, medium-pressure and low-pressure air, oil and
water filters, liquid filters, pipe filters and process pipe filters, gas filters, including in particular for seal gas
systems, cyclone filters and other separating filters, all of the aforesaid being parts of machines; filling filters and ventilation filters, main-flow filters and partial-flow filters, multistage
filters, return flow filters, including namely suction filters and return-flow suction filters, tank-installed filters, including namely ventilating and drying units, drum filters and strip winding filters, perforated plate filters and screen filters, offline
filters and inline filters and spin-on filters, plastic melt filters, membrane filters, filter units comprising drainage devices, all of the aforesaid being parts of machines; filter elements,
perforated plate and screen filter elements, gap-type filter elements, rheological filter elements, flow filter elements, filter candles, filter cartridges, filter housings, filter discs and disc
filter elements, filter mats, filter pots, filter cloths, filter bags, filter strips, filter packets and deep filter elements, including namely filter fabric materials, in each case being parts of machines; separating devices for separating liquids in relation to oil/water mixtures; cooling and heating devices,
including namely heat exchangers being (parts of machines) for
stationary and mobile applications for exchanging heat between liquid and/or gaseous media; shut-off equipment, shut-off apparatus, stop valves, switch-over devices and valves being parts for
machines, in particular for hydraulic and pneumatic propellants and media; inflow pressure and circulating pressure balances, flow control valves, priority valves, shuttle valves, seat valves and
slide valves, throttle valves and throttles, diaphragms, directional control valves, non-return valves, pressure valves, pressure control valves and pressure limiting valves, optionally with
indicators and monitors, vent valves as part of machines; control apparatus being parts of machines, in particular for hydraulic and pneumatic installations, in
particular flow-dividers and control blocks, including in particular valve control blocks; hydraulic or pneumatic operating cylinders,
being parts of machines; hydraulically and pneumatically operated or driven motors, gear boxes, couplings, pumps and compressors, all of the aforesaid being parts of machines; hydraulic or pneumatic
drive units for land, air and water vehicles and being parts of machines, in particular for process engineering, for general machine construction and for vehicles, in particular for construction
equipment, for machine tools, for plastic-manufacturing machines, in particular consisting of at least one hydraulic pump, at least one drive motor and at least one container of metal or plastic for
liquids; hydraulic or pneumatic drive units for land, air and water vehicles and being parts of machines, in particular for the driving of tools, for presses, for transport systems, for shipping and
aeronautics and space travel, for chemical and reactor technology, for mining and metallurgical plants and for rolling mills, in particular consisting of at least one hydraulic pump, at least one
drive motor and at least one container of metal or plastic for liquids; hydraulic motors and engines; control apparatus, in particular electric, electro-mechanical and electro-hydraulic control
apparatus being parts of machines (included in this class); lubricating apparatus and equipment, lubricating installations, and liquid separators, including in particular
oil mist separators, supply apparatus, in particular distributors for stationary and mobile applications for pneumatic and hydraulic installations and
machines stationary and mobile applications; parts of hydraulic and pneumatic machines, namely, mechanically operated clamping
apparatus, clamping machines and clamping tools; motor-driven hydraulic pressure and feed pumps, being parts of machines, adjustable and non-adjustable; hydraulic drive units for elevator
controllers, transport controllers and lift controllers, in particular consisting of a hydraulic pump, a drive motor and a liquid container of metal or plastic; machines for industrial washing and
cleaning; electric motors for machines, including namely frequency-regulated motors; single and
multi-stage compressors being parts of machines; blowing machines for the compression, exhaustion and transport of gases; electric, hydraulic
and electro-hydraulic actuators for all types of transmissions being parts of machines, in particular for variable speed motors; separation
devices Oil separators and oil filter devices, and as well as
oild filters for lubrication systems, in particular for turbines in the nature of such as gas motors,
steam motors or hydro motors, as well as and spare parts for these goods, specifically {specify commercial name
of Class 7 goods}
Class 11: Separation devices Separators for the cleaning and
purification of liquids and water and air filter devices as well as ,
specifically filters for heating, steam-generating, refrigerating, drying, ventilating, water supply, water treatment, air-conditioning, and sanitary installations and apparatus; spare parts
for the aforesaid goods, namely {specify commercial name of Class 11 goods}; filters for industrial applications for heating, steam-generating, refrigerating, drying,
ventilating, water supply, water treatment, air-conditioning, and sanitary installations and apparatus, namely, coalescers, high-pressure, medium-pressure and low-pressure filters, liquid
filters, line filters and process line filters, gas filters, including for seal gas systems, cyclone filters and other separating filters, filling filters and
ventilation filters, full flow filters and bypass filters, multistage filters, return flow filters, including suction filters and return flow suction filters,
tank-integrated filters, including ventilating and drying devices, drum filters and strip winding filters, perforated plate filters and screen filters, offline filters and in line filters and spin-on
filters, plastic melt filters, membrane filters, filter units together with draining apparatus; filter elements, liquid and gas filter
component parts not being parts of machines, engines, motors or land vehicles, namely, perforated plate and screen filter elements, gap-type tube filter elements, rheological filter elements,
flow filter elements, filter candles, filter cartridges, filter housings, filter discs and disc filter elements, filter mats, filter pots, filter cloths, filter bags, filter strips, filter packets
and deep filter elements, including namely filter fabric materials; separating devices for separating liquids in relation to oil/water
mixtures, namely separators for the cleaning and purification of liquids; heat exchangers, not being parts of machines for stationary and
mobile applications for exchanging heat between liquid and/or gaseous media; cooling installations for water and heating installations for media therein; cooling and heating installations for media therein
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.Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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).
US ATTORNEY REQUIRED
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).
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action
/Valerie Kaplan/
Trademark Examining Attorney
Law Office 107
571-272-6767
valerie.kaplan@uspto.gov
RESPONSE GUIDANCE