Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1546087

 

 

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 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 searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

SUMMARY OF ISSUES:

• Requirement – U.S. Counsel
• Requirement – Amend Identification of Goods and Services

 

 

REQUIREMENT – U.S. COUNSEL

 

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.

 

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 or designate a U.S.-licensed attorney.  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).

 

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES

 

The current wording used to describe the goods and services needs clarification because it is currently indefinite and/or too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “especially” in the identification of goods 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). 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, 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).  Where applicant uses indefinite words such as “apparatus,” “components,” “devices,” “equipment,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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 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).

 

In Classes 11 and 40, particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods in the identified international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii).  Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Classes 11 and 40 is indefinite and does not appear to describe any goods in that class:  “Plants for chemical treatment in plastics production for the man-made fibre industry, in particular polymerisation plants for the production of thermoplastic polymer, polycondensation plants for the production of thermoplastic polymer” in Class 11, and “assembly…of chemical plants for plastics production” in Class 40.  See TMEP §1904.02(c)(iii).  Class 11 includes water treatment, sewage treatment, and power plants, but not chemical treatment plants.  Class 40 includes “assembly of products for others.”

 

Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any amendment to the identification must identify goods and/or services in International Classes 11 and 40 and be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii).  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).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c). 

 

Alternatively, applicant may delete this unacceptable wording from the identification.  See TMEP §1904.02(c)(iii)-(iv).  However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted.  See TMEP §1402.07(e).

 

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration.  TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii).  However, filing such a request with the International Bureau is not considered a formal response to this Office action.  See TMEP §1904.02(c)(iv), (e)(iii).  Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii).  The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances.  See TMEP §§716.02(g), 1904.02(c)(iii)-(iv). 

 

All unacceptable wording is discussed, by class, below.  Bolded wording indicates suggested additions to clarify indefinite/overbroad wording.  Bolded italicized wording indicates fill-in-the blank elements with suggestions.  Bolded strikethrough (example) indicates suggested deletions.  Bolded wording within brackets indicates explanatory notes not to be reproduced in applicant’s amended identification.

 

Applicant may adopt the following identification, if accurate: 

 

Class 7:           Machines and apparatus for the automation of melt spinning machines and textile machines, especially namely, industrial robots for handling threads, tubes and bobbins, industrial robots for handling maintenance work, transport devices {specify particular type of transport devices, e.g., pneumatic transporters, belt conveyors} for tubes and bobbins, transfer devices {specify particular type of transfer devices, e.g., ball transfer units} for tubes and bobbins, sorting machines for bobbins and tubes, bobbin packing machines; mechanical apparatus, parts and components for the production of thermoplastics, namely, {specify particular apparatus, parts and components, e.g., plastic processing machines, structural parts and components for the aforementioned goods}

 

Class 9:           Electrical apparatus for the automation of melt spinning machines and textile machines, in particular, coding devices{specify particular coding devices, e.g., electronic coding units, bar code printers}, readers for {specify type of code, e.g., bar, optical} codes, inspection devices{specify particular inspection devices, e.g., electro-optical inspection apparatus for industrial use}; visualisation devices in the nature of {further specify nature of devices, e.g., cameras for monitoring automated industrial processes}; electric control devices for machines, namely, {further specify particular devices, e.g., electric installations for the remote control of industrial operations}; {specify whether downloadable or recorded} computer software for the automation of melt spinning machines and textile machines; {specify whether downloadable or recorded} artificial intelligence computer software and hardware for {further specify type of process, e.g., industrial} process monitoring and control; {specify whether downloadable or recorded} machine learning computer software; electrical equipment and components for monitoring, inspection and control of chemical plants for plastics production, namely, {specify equipment and components, e.g., electric installations for the remote control of industrial operations}; {specify whether downloadable or recorded} computer software for monitoring, inspection and control of chemical plants for plastics production

 

Class 11:         Plants for chemical treatment in plastics production for the man-made fibre industry, in particular polymerisation plants for the production of thermoplastic polymer, polycondensation plants for the production of thermoplastic polymer; apparatus, parts and components for industrial treatment plants for the further processing of thermoplastics, namely, {specify particular apparatus, parts and components, e.g., steamers for chemical processing, distillers for chemical processing, drying apparatus for chemical processing}; apparatus, parts, components and industrial treatment and recycling plants for plastics consisting thereof, namely, {specify particular apparatus, parts and components, e.g., steamers for chemical processing, distillers for chemical processing, drying apparatus for chemical processing}

 

Class 37:         Construction, assembly, installation and maintenance of chemical plants for plastics production

 

Class 42:         [NOTE: currently acceptable] Engineering services and engineering consultancy for the automation of melt spinning machines and textile machines; engineering services and engineering consultancy for the design, planning, construction, installation supervision, commissioning, inspection, maintenance and repair of chemical plants for plastics production

 

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.

 

 

RESPONSE GUIDELINES

 

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

 

• 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.

 

 

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@uspto.gov