NOTE TO THE FILE
SERIAL NUMBER: 79302951
DATE: 09/16/2021
NAME: dbice
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
X Changed TRADEUPS to: Amendment to Identification of Goods and ServicesFrom: Tama L. Drenski <tldrenski@rennerkenner.com>
Sent: Thursday, September 16, 2021 8:53 AM
To: Bice, Daniel <Daniel.Bice@USPTO.GOV>
Cc: Teri Malcolm <malcolm@rennerkenner.com>
Subject: RE: USPTO - U.S. Serial No. 79302951 - Your application for "MOBA" [Docket No. SCL.T0003]
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Attorney Bice,
Applicant agrees to your proposed amendments, and in addition would like to cancel the goods colored in red below.
Class 007: “Agricultural equipment, namely, reapers, seed planters, harvesters; earthmoving machines; construction equipment, namely, concrete construction machines, road construction machines, graders, bulldozers, scrapers, bulldozer blades, excavating machines, loader buckets for excavators, joy stick machine controls for excavators and not for game machines, road milling machines, road paving machines, earth and ground surface compaction machines; oil and gas extraction and mining equipment, namely crushing machines, mining machines, conveyers being machines, oil-well pumping machines, drilling machines and
devicesparts therefor, machines and machine-driven devices for lifting, tilting and pouring of waste, waste receptacles and waste containers; machines and machine-driven equipment for waste management, in particular for loading, unloading and emptying of waste receptacles and waste containers; replacement parts and structural parts, spare replacement and structural partsand accessoriesfor all the aforesaid goods; components for road making machines, namely, mechanical and hydraulic lifts, levellers; components for earth moving machines, namely graders, excavators,power-operatedshears, breakers, pulverizers, grabs being attachments for cranes,quick hitches,hitches for towing agricultural machines, earth moving machines and construction machines,couplers,buckets, grapples, earth and ground surface compactors, wheel loader buckets, mobile scales; compaction systems for earthworks and road construction, namelycomprised of ground surface finishing and compacting machines,and road rollers; controllers for road making machines or earth moving machines, namely, joysticks being parts of machines other than for game machines; crane and platform systems comprised of cranes and lifting work platforms; components for crane and platform systems, namely replacement parts and structural parts for cranes and lifting work platforms; controllers for crane and platform systems, namely, joysticks being parts of machines other than for game machines;other than goodsAll of the foregoing not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry.”
Best regards,
Tama Drenski
From: Bice, Daniel <Daniel.Bice@USPTO.GOV>
Sent: Friday, September 3, 2021 12:51 PM
To: Tama L. Drenski <tldrenski@rennerkenner.com>
Cc: Teri Malcolm <malcolm@rennerkenner.com>
Subject: RE: USPTO - U.S. Serial No. 79302951 - Your application for "MOBA" [Docket No. SCL.T0003]
Dear Ms. Drenski:
Yes. That will be fine.
Best regards,
Travis
D. Travis Bice, Esq.
Trademark Examining Attorney, Law Office 128
United State Patent and Trademark Office
Jefferson Building, 500 Dulany Street
Alexandria, Virginia 22314
Telephone: (571) 272-3385
Facsimile: (571) 273-6465
Email: daniel.bice@uspto.gov
All relevant e-mail communication will be placed in the official application record. The trademark examining attorney may provide additional explanation pertaining to the application, but may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Tama L. Drenski <tldrenski@rennerkenner.com>
Sent: Friday, September 3, 2021 11:55 AM
To: Bice, Daniel <Daniel.Bice@USPTO.GOV>
Cc: Teri Malcolm <malcolm@rennerkenner.com>
Subject: RE: USPTO - U.S. Serial No. 79302951 - Your application for "MOBA" [Docket No. SCL.T0003]
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Attorney Bice,
Thank you for your email. I will forward this information to my client and get back to you as soon as possible. It may not be until the latter part of next week. Is that acceptable?
Best regards,
Tama Drenski
Tama L. Drenski, Attorney at Law ǀ Renner Kenner ǀ 106 South Main Street, Suite 400 ǀ Akron, OH 44308 ǀ
Office: (330) 376-1242 ext. 4372 ǀ Direct phone: (330) 237-2572 ǀ Fax: (330) 376-9646 ǀ www.rennerkenner.com ǀ tldrenski@rennerkenner.com
ATTENTION: This transmission and any accompanying attachments are intended for the use of the addressee only and may contain information that is privileged or otherwise confidential. If you are not the intended recipient, you are hereby notified that any dissemination, review, or use of this email transmission or attachments is strictly prohibited. If you have received this transmission in error, please notify the sender immediately.
From: Bice, Daniel <Daniel.Bice@USPTO.GOV>
Sent: Friday, September 3, 2021 11:31 AM
To: Tama L. Drenski <tldrenski@rennerkenner.com>
Cc: Teri Malcolm <malcolm@rennerkenner.com>
Subject: USPTO - U.S. Serial No. 79302951 - Your application for "MOBA" [Docket No. SCL.T0003]
Dear Mr. Drenski:
I am the Trademark Examining Attorney assigned to review the application submitted on behalf of the applicant, MOBA Mobile Automation AG [Docket No. SCL.T0003], for the word mark MOBA. Upon review of the recently filed Response, the application almost appears ready for publication, but for a few issues requiring your attention before I can move the application forward. However, these issues can be resolved by me through an Examiner’s Amendment with your authorization.
Specifically, the issues pertain primarily with a few minor clarifications required in the identification of goods and services. First, in International Class 007, the manner by which the “Machine controls for excavators” must be indicated, not including “electronic.” Therefore, either “pneumonic” or “hydraulic” is suggested or the applicant could adopt the wording “in the nature of joysticks being parts of machines other than for game machines.” The wording “paving machines” must indicate what type of material is being paved, such as “road,” “asphalt,” or “concrete.” The wording “compaction machines” and “compactors” must indicate what is being compacted, such as “industrial trash,” “waste,” “earth,” or “ground surface.” The wording “drilling machines and devices” must indicate the types of “devices” intended to be identified, as this entry is not definite otherwise, or simply replace this wording with “parts therefor” if accurate. The wording “spare parts” in the entry for “replacement parts and structural parts, spare parts and accessories for all the aforesaid goods” should indicate that such parts are “replacement and structural” in nature. Furthermore, for that entry, the wording “accessories” requires further clarification as to the types of accessories being identified by listing each accessory by name. If the applicant’s use of the wording “accessories” is merely an extension of the wording “replacement and structural parts,” and no goods otherwise not encompassed by such wording would be identified, then deletion of the wording “accessories” may be appropriate instead of providing an exhaustive list. The wording “shears” must be clearly “power-operated.” The wording “grabs” appear to be ambiguous, but it appears to be a type of “attachment for cranes.” If so, such additional wording is suggested to further clarify this entry. The wording “quick hitches” is a registered trademark, and therefore may not appear in the identification of goods. The entry is recommended to be deleted and replaced with a generic word for this type of good, such as “hitches for towing agricultural machines, earth moving machines and construction machines.” The wording “mobile scales” appears to instead identify an International Class 009 good for measurement. Therefore, this wording should be deleted. The wording “joysticks” in the entry for “controllers for road making machines or earth moving machines, namely, joysticks” must indicate that such joysticks are other than those for game machines. Finally, the wording “other than goods not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry” should better indicate that this limitation is applying to the aforementioned goods, because as currently written this is not clear.
In International Class 009, the wording “electronic measuring apparatus” should more clearly identify that the thing being measured is “electric power.” The wording “electronic level controllers” should indicate the type of equipment and machines such controllers are used with. The wording “or” in the entry for “recorded or downloadable computer programs…” should either indicate “recorded” or “downloadable” or use the wording “and” to indicate both. The wording “or” is inherently indefinite, as it is not clear whether the applicant is providing recorded or downloadable software or both. The use of the wording “systems” in the entry for “integrated computerised systems for the identification of containers, the recording their weight and the weight-based billing of charges” requires clarity as to what is comprised within the system by indicating those specific goods which comprise the system. In the entry for “compaction measuring systems, namely acceleration measuring apparatus” the type of “acceleration measuring apparatus” must be identified, such as “microsensors.” As indicated before, the wording “other than goods not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry” should better indicate that this limitation is applying to the aforementioned goods, because as currently written this is not clear.
In International Class 038, the wording “or” should be swapped out for “and” or the applicant should select one or the other of the two services. Furthermore, the wording “rental of … computer terminals” could be construed as a Class 042 technology service. However, if all of the goods listed are types of “telecommunications equipment,” then such should characterized as such to be properly classified.
In International Class 042, I mistakenly suggested a broadening of an entry from “engineering, in particular carrying out technical tests and examinations including studies of engineering projects, testing and quality control, in particular consultancy and advisory services relating to product testing, material testing, quality assurance and quality control” to simply “engineering.” This suggestion resulted in an amendment outside of the scope of the original limiting language. Therefore, I have suggested reincorporating the limiting language below. Finally, as indicated before, the wording “other than goods not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry” should better indicate that this limitation is applying to the aforementioned goods, because as currently written this is not clear.
Please see the suggested amendments below.
Class 007: “Agricultural equipment, namely, reapers, seed planters, harvesters; earthmoving machines; construction equipment, namely, concrete construction machines, road construction machines, graders, bulldozers, scrapers, bulldozer blades, excavating machines, loader buckets for excavators, joy stick machine controls for excavators and not for game machines, road milling machines, roadpaving machines, earth and ground surfacecompaction machines; oil and gas extraction and mining equipment, namely crushing machines, mining machines, conveyers being machines, oil-well pumping machines, drilling machines and
devicesparts therefor, machines and machine-driven devices for lifting, tilting and pouring of waste, waste receptacles and waste containers; machines and machine-driven equipment for waste management, in particular for loading, unloading and emptying of waste receptacles and waste containers; replacement parts and structural parts, spare replacement and structural partsand accessoriesfor all the aforesaid goods; components for road making machines, namely, mechanical and hydraulic lifts, levellers; components for earth moving machines, namely graders, excavators, power-operated shears, breakers, pulverizers, grabs being attachments for cranes,quick hitches,hitches for towing agricultural machines, earth moving machines and construction machines, couplers, buckets, grapples, earth and ground surfacecompactors, wheel loader buckets, mobile scales; compaction systems for earthworks and road construction, namelycomprised of ground surface finishing and compacting machines,and road rollers; controllers for road making machines or earth moving machines, namely, joysticks being parts of machines other than for game machines; crane and platform systems comprised of cranes and lifting work platforms; components for crane and platform systems, namely replacement parts and structural parts for cranes and lifting work platforms; controllers for crane and platform systems, namely, joysticks being parts of machines other than for game machines;other than goodsAll of the foregoing not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry.”
Class 009: “Electronic measuring apparatus, in particular angle measuring device and inclinometers; electronic control circuits and electronic control apparatus, in particular for regulating and controlling of inclination, position and speed of platforms, conveyer belts, drills; electronic weighing apparatus and instruments; electronic dosing apparatus, namely dispensers of preset portions of fluids, solid granules and powder for dosing purposes, all not for medical use; electroacoustic ultrasound distance measuring apparatus comprised of an ultrasound transmitter and ultrasound receiver, in particular for controlling construction equipment and agricultural machines, not for medical purposes; distance measuring apparatus; recorded software for database management; recorded data banks in the nature of electronic databases in the field of agricultural earth moving analytics; recorded electronic data files featuring truck hauling measurements and analytics; information technology and audiovisual apparatus, in particular audio and visual and photographic apparatus in the nature of audio-video receivers, video cameras, photographic cameras, thermographic apparatus in the nature of infrared cameras, infrared detection apparatus, data capture apparatus in the nature of video capture cards, and data communications apparatus in the nature of optical data links, computer hardware for communicating data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks, and apparatus for recording, transmission, evaluation and storage of data in the nature of portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating and reviewing data files; apparatus, instruments and cables for electricity, in particular antennae and electronic operating consoles being electrical distribution consoles; optical equipment and apparatus, namely optical receivers, digital transmitters; measuring, detecting and monitoring instruments, devices and regulators, in particular electronic measuring apparatus for measuring electric power and regulators in the nature of voltage regulators for electric power, electronic sensors and detectors, namely, industrial calibration sensors, electronic proximity sensors, vehicle safety back-up sensors, sensors for the determination of temperatures, positions, vibrations, accelerations, inclinations, pressures, forces, rotations and distances, motion detectors, temperature measuring instruments in the nature of temperature sensors, temperature indicators, thermometers other than for medical use, display devices in the nature of flat panel display screens, voice display monitors, liquid crystal displays, and operating devices in the nature of electronic display interfaces; electronic regulating switches and electronic control apparatus, in particular for regulating and controlling of position, incline, location, speed, concentration, mass, fullness level or temperature, namely, electronic process control units, electrical control devices, electronic level controllers for controlling construction equipment and agricultural machines; navigation, orientation, location tracking, target tracking and mapping equipment, in particular GPS devices for navigation and tracking and sensors for determining position, distance travelled or speed; replacement parts and structural parts for the aforesaid goods; electronic identification systems, in particular for the wireless identification of containers comprised of radio frequency identification readers; transponders; recorded
orand downloadable computer programs for the container management; integrated computerised systems for the identification of containers, the recording their weight and the weight-based billing of charges comprised of radio frequency identification readers, electronic sensors for reading identification tags, and electronic scales for measuring weight of containers; electronic controls, sensors and detectors, namely, electronic proximity sensors, sensors for the determination of positions and distances, motion detectors, electronic gauges and instruments, namely, level gauges, angle gauges, weight measuring instruments and apparatus, namely, scales, and electronic control and display devices, namely, flat panel display screens, voice display monitors, liquid crystal displays, electronic display interfaces, for devices for receiving, lifting, tilting and emptying of waste disposal of a disposal vehicle or refuse vehicle; replacement parts and structural parts for all the aforesaid goods; measuring devices for street construction, namely level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; measuring devices for earth moving machines, namely level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; measuring devices for pavers, namely level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines, layer thickness measuring machines; measuring devices for compactors, namely level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; compaction measuring systems, namely acceleration measuring apparatus being microsensors; measuring devices for road-milling machines, namely level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; electronic machine controllers for road making machines; 2D and 3D levelling systems for earth moving machines and components therefor, namely level measuring machines, level indicators; 2D and 3D electronic control systems for earth moving machines; recorded software for operating and monitoring road making machines; recorded software for controls of machinery in road construction; recorded software for levelling systems; recorded software for measuring systems in road construction; recorded software for operating and monitoring earth moving machines; weighing systems, in particular scales relating to waste management; electronic controllers for waste disposal vehicles; recorded software for operating and monitoring waste disposal vehicles; recorded software for operating and monitoring crane and platform systems; electronic machine controllers for crane and platform systems; load cells for crane and platform systems; sensors for crane and platform systems in the nature of vibration, proximity, and temperature sensors; inclination sensors for crane and platform systems; communication modules for crane and platform systems, namely, wireless transmitters and receivers; electronic machine controllers for agricultural machines; recorded software for operating and monitoring agricultural machines; weighing systems for agricultural machines comprised of scales and balances; electronic machine controllers of mining machines; electronic controllers of earth augers; recorded software relating to operating and monitoring mining machines; recorded software relating to operating and monitoring earth augers; measuring systems relating to mining machines, comprised of level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; measuring systems relating to earth augers comprised of level measuring machines, distance measuring apparatus, angle finders, laser measuring systems, coordinate measuring machines; computer display monitors relating to road making machines or earth moving machines; computer display monitors relating to crane and platform systems;other than goodsAll of the foregoing not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry.”
Class 012: “Components for waste disposal vehicles, namely suspension springs, transmissions, spring perches, crank cases for land vehicle components, other than engines; parts and fittings for vehicles, namely, electronic and mechanical devices specially adapted for use with vehicles for receiving, lifting, tipping and emptying of waste containers of a disposal vehicle or refuse vehicle and replacement and structural parts thereof.”
Class 037: “Construction, assembly and demolition, in particular construction of streets, roads and motorways, consultancy and providing information in the field of road construction and civil engineering; rental of tools and equipment for building work, in particular rental of equipment, installations and systems for construction machinery and construction equipment; installation, cleaning, repair and maintenance, namely, maintenance of electronic building and traffic control equipment and providing of information for installation of electronic building equipment, installations in the nature of building equipment and systems comprised of building equipment, and of machines; advisory, consultancy and information services relating to all the aforesaid services; earthmoving in the nature of excavation, street construction; performing manufacturing of surfaces used by vehicles and pedestrians, namely, road paving, road construction, brick laying, block laying, concrete paving services.”
Class 038: “Computer communications and Internet access, in particular electronic data transmission via the Internet
orand providing of Internet on-line forums for road construction and earth moving; providing of access to electronic databases and communications networks in the nature of global computer networks; telematics services, namely, telematics sending of information; communications services for the electronic exchange of data in electronic form stored in databases accessible via telecommunication networks; communications in the nature of voice communication, data graphics, images, audio, video by means of radio, computer terminals, the Internet, satellite, telematics, cables and digital transmission; telecommunication services, namely, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks, transmission of podcasts, transmission of voice, data and documents, in the field of road construction, earth moving, hauling; rental of access time to electronic databases and communications networks; rental and leasing of objects in connection with providing the aforesaid services, namely, rental of telecommunication equipment in the form of lines, radio, computer terminals, telecommunication routers; consultancy, advisory and information services relating to the aforesaid services.”
Class 042: “Scientific research and development; technological services, namely, research and design, in particular in the field of building construction; engineering services in the nature of carrying out technical tests and examinations of engineering projects; consultancy and advisory services relating to product quality testing, material testing, quality assurance and quality control; professional consultancy relating to construction, road paving, earth moving, and waste hauling machine automation technology; research and development of new products; research relating to construction machinery; programming of electronic control systems in the nature of computer software for others; technical project studies, namely, technical project planning and design engineering of construction projects; technical consultancy and construction drafting in the field of development of products for stabilising surfaces used by vehicles and pedestrians;
other than goodsAll of the foregoing not relating to egg sorting and processing solutions for handling, packaging, breaking and loading of eggs and poultry.”
Please indicate whether the above-suggested amendments are authorized, and I will make the changes by Examiner’s Amendment. Should you have any questions or concerns, please do not hesitate to call or email me.
Best regards,
Travis
D. Travis Bice, Esq.
Trademark Examining Attorney, Law Office 128
United State Patent and Trademark Office
Jefferson Building, 500 Dulany Street
Alexandria, Virginia 22314
Telephone: (571) 272-3385
Facsimile: (571) 273-6465
Email: daniel.bice@uspto.gov
All relevant e-mail communication will be placed in the official application record. The trademark examining attorney may provide additional explanation pertaining to the application, but may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.