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. 79281269
Mark: EXOS
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Correspondence Address: DREISS Patentanwälte PartG mbB
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Applicant: ERSA GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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NON-FINAL OFFICE ACTION
International Registration No. 1520670
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 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.
NO CONFLICTING 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).
“Electrical and electronic machines for the machining and manufacture of electrical and electronic components and printed circuit boards assembled with electronic components; electrical and electronic [provide the common commercial name for the “soldering equipment”], [provide the common commercial name for the “soldering devices”] and soldering apparatus, all for the processing and manufacture of electrical and electronic components and printed circuit boards assembled with electronic components; [provide the common commercial name for the “vacuum stations”] for soldering processes; [specify, e.g., “autogenous”] soldering machines, [specify “electric” or “gas-operated”] soldering apparatus, [provide the common commercial name for the “soldering devices,” e.g., “electric soldering irons”] and [provide the common commercial name for the “soldering instruments,” e.g., “soldering lamps”] as well as their structural parts and [provide the common commercial name for the Class 7 “accessories” and “soldering installations”]; reflow soldering machines, namely, vacuum reflow soldering machines and [provide the common commercial name for the Class 7 “installations”]; structural parts and [provide the common commercial name for the Class 7 “accessories”] for all aforementioned machines and installations,” in International Class 7.
“Electronic controllers for soldering machines and soldering equipment, in particular for reflow soldering machines and systems as well as for vacuum reflow soldering machines and systems; [provide the common commercial name for the “audio, visual and photographic monitoring devices,” e.g., “cameras, switchers, monitors, microphones, and recorders”] for the monitoring of soldering and desoldering factory manufacturing processes; [provide the common commercial name for the “measuring, recognition and monitoring instruments, devices”] and electronic controllers for soldering devices, soldering machines, soldering stations and soldering systems, in particular for reflow soldering machines and systems and for vacuum reflow soldering machines and systems; sensors and detectors for use in [specify, e.g., “controlling the actuation and operation of”] soldering machines and soldering equipment,” in International Class 9.
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 MUST BE REPRESENTED BY A U.S.-LICENSED ATTORNEY
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
QUESTIONS
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
Click to file a response to this nonfinal Office action.
/John M. Gartner/
Trademark Examining Attorney
Law Office 102
(571) 272-9255
john.gartner@uspto.gov (informal correspondence)
RESPONSE GUIDANCE