Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  August 24, 2020

 

International Registration No. 1520670

 

This final Office action is a response to applicant’s communication filed July 31, 2020.

 

STATUS

 

In a first Office action dated April 9, 2020, the examining attorney required applicant to amend the identification of goods and obtain U.S. counsel.  In its response, applicant 1) Amended the identification and 2) Demonstrated that it had retained U.S. counsel.  Number 2 is acceptable.

 

IDENTIFICATION REQUIREMENTS ARE MADE FINAL

 

The following identification requirements are now made FINAL.  See 37 C.F.R. §2.63(b).

 

The identification of goods remains indefinite and must be clarified.  The meaning of “soldering lamellas” is unclear.  If this refers to the solder itself, the goods are beyond the scope of the original application.  The meaning of “soldering strands as parts of” is unclear.  If this refers to soldering wire, the goods are beyond the scope of the original application.  The following Class 7 identification is unclear:  “soldering devices, namely, soldering irons as well as their structural parts, soldering tips, soldering nozzles, soldering nozzle inserts, soldering lamellas, soldering strands as parts of, soldering pots, soldering baths, electric solder pumps, all for use as part of an electric soldering apparatus, and soldering apparatus, all for the processing and manufacture of electrical and electronic components and printed circuit boards assembled with electronic components.”  The structure of this sentence makes the nature of the goods unclear.  “Reflow soldering machines, namely, vacuum reflow soldering machines” is redundant.  “Temperature sensors sold as integral part of soldering machines and soldering equipment . . .” is unacceptable both because the common commercial name of the soldering equipment is not identified and because such goods are classified with the finished product; the goods, therefore, are not Class 9 goods and are beyond the scope of the original identification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

“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 soldering equipment, namely, reflow soldering machines and soldering systems comprised primarily of electric soldering irons, electric soldering pumps and electric soldering apparatus, for use in the manufacture of electrical engineering and electronic products; soldering apparatus and component parts for soldering apparatus, namely, soldering irons and their structural parts, soldering tips, soldering nozzles, soldering nozzle inserts, soldering pots, soldering baths, and electric solder pumps, all for the processing and manufacture of electrical and electronic components and printed circuit boards assembled with electronic components; vacuum stations for soldering processes, namely, electric or robotic vacuum cleaners or vacuum pumps; autogenous soldering machines and electric soldering apparatus, and their structural parts; vacuum reflow soldering machines; structural parts 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; audio, visual and photographic monitoring devices in the nature of cameras, switches and monitors for the monitoring of soldering or desoldering in factory manufacturing; 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 controlling the actuation and operation of soldering machines and soldering equipment,” in International Class 9.

 

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).

 

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.

 

For the foregoing reasons, the requirements are maintained and made FINAL.

 

PROPER RESPONSE TO A FINAL OFFICE ACTION

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

 

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.