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. 79302951
Mark: MOBA
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Correspondence Address: |
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Applicant: MOBA Mobile Automation AG
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1572322
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
INTRODUCTION
SEARCH OF USPTO DATABASE OF MARKS
I. REQUIREMENT – FOREIGN APPLICANT MUST OBTAIN U.S. COUNSEL
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.
To appoint 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).
II. REQUIREMENT – ENTITY DESIGNATION AND CITIZENSHIP REQUIRED
Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. 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 information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading 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. See id.
III. PARTIAL REQUIREMENT – AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO
THE GOODS AND SERVICES SPECIFIED THEREIN
The applicant must clarify some of the wording in the identification of goods and services because such wordings are indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. These wordings are indefinite because such wordings do not make clear the exact nature, function, or type of the goods or services. See TMEP §1402.01. This partial requirement does not apply to the goods identified as “machines and machine-driven equipment for waste management, in particular for loading, unloading and emptying of waste receptacles and waste containers; controllers for road making machines or earth moving machines, namely, joysticks” in International Class 007, the goods identified as “Electric measuring apparatus, in particular angle measuring device and inclinometers; distance measuring apparatus; transponders; electronic machine controllers for road making machines; weighing systems, in particular scales relating to waste management; electronic controllers for waste disposal vehicles; electronic machine controllers for crane and platform systems; load cells for crane and platform systems; inclination sensors for crane and platform systems; electronic machine controllers for agricultural machines; electronic machine controllers of mining machines; electronic controllers of earth augers” in International Class 009, the services identified as “rental of access time to electronic databases and communications networks” in International Class 038 and the services identified as “research and development of new products; research relating to construction machinery” in International Class 042.
Specifically, in International Class 007, the first entry for “Agricultural, earthmoving, construction, oil and gas extraction and mining equipment” is indefinite and vague, because it does not identify the specific types of equipment being broadly categorized as “agricultural” or “earthmoving” among the several categories listed. Therefore, the applicant should either refine this entry to a more definite entry identifying the function of the equipment or specify types of equipment for each. Further, generally where the wording “and/or” is used, it is indefinite because it leaves open the opportunity that the applicant may be doing only one or the other of two separate entries listed. Instead, the applicant should either indicate “and” or remove the entry not used by the applicant.
The applicant uses the wording “system” or “systems” to describe several of its goods in International Classes 007 and 009. This is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system, and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although systems may be classified in several international classes, any modification to the identification must identify goods in International Class 007 or Class 009 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Generally, where the applicant identified “components” for various machines or systems, the wording “components” needs to be clarified as to what specific types of components are being identified. This is an issue throughout International Classes 007, 009 and 012
In International Class 009, the applicant appears to be using “electrical” as synonymous with “electronic,” but it is important to distinguish the two as “electrical” such as “electric control circuits” will generally be understood to be referring specifically to control circuits for controlling electricity. This does not comport with the later specification that the goods are for regulating and controlling “inclination,” “position” or “speed” among other variables. Therefore, it appears the applicant intended to identify electronic controls. Furthermore, the applicant must indicate what is the subject of the inclination and position regulation and control, such as “conveyor belts” or “drills.” The applicant must specify the type of “dosing apparatus” that is being identified, such as “dispensers of preset portions of fluids, solid granules and powder for dosing purposes” and indicate that it is not for medical purposes.
The applicant identifies “recorded content, especially software, databanks and files.” The use of the wording “especially” implies other types of goods could be identified but not shown. Therefore, the applicant should instead adopt the wording “namely” and specify exactly which types of “recorded content” is being identified. The wording “software” throughout must indicate whether the software is recorded or downloadable and the function of such software. Also, the wording “files” must be clarified as to electronic data files and the subject matter of the files must be provided.
Generally, the applicant used vague wording such as “apparatus” or “device” without specifying the type of goods being identified. 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). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” 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). In the case of “measuring, detecting and monitoring instruments, devices and regulators, in particular electric measuring apparatus and regulators,” this wording could include temperature measuring instruments, temperature sensors or temperature indicators. Therefore, these entries are indefinite without more clarity as to which type of International Class 009 good is being identified.
The applicant uses the wording “display modules,” but it appears the applicant may have intended to identify “computer display monitors.” The applicant should clarify, because “modules” generally identifies “memory modules” or more technical circuitry modules, not generally for “display” purposes.
In International Class 012, the applicant identified “components” but does not specify the types of components being identified, only the purpose of such components. Therefore, this entry is indefinite and the applicant should clarify by identifying the specific types of components being identified. Further, the entry for “parts and fittings for vehicles, namely, devices for receiving, lifting, tipping and emptying of waste containers of a disposal vehicle or refuse vehicle and parts thereof” must make clear that such devices are specially adapted for use with vehicles, either by specifying a specific type of good that is so specially adapted or indicating that this good is specially adapted for use with vehicles.
In International Class 037, the wording “distribution of information” is indefinite and vague, as distribution generally creates a connotation of publishing or disseminating which would not be a service properly classified in International Class 037, but the applicant could have intended to identify the services of “providing of information.” The applicant should clarify. The applicant appears to use the plural noun “installations” in an entry about “rental services.” Generally, rental services are classified according to the nature of the goods being rented. Equipment for building is generally rented as a Class 037 service, and therefore the types of “installations” must be identified. Likewise, the wording “systems” which is also subject to the rental services must indicate the types of goods which make up the system such that it is clear that the goods are for building, maintenance or repair purposes in International Class 037. Rental of “software” which can sometimes make up “systems” would be classified in Class 042, which the applicant cannot adopt based on this particular entry due to the application seeking registration based on a Madrid 66(a) filing basis. The wording “Earthmoving” is not definite without a more specified type of service being identified, such as “excavation services.” Finally, the entry for “performing manufacturing of surfaces used by vehicles and pedestrians” is indefinite and vague, as “manufacturing services” are generally classified in International Class 040. However, if the applicant intended to identify road paving or installation of floor tile type services, then this entry would appear instead to identify Class 037. This entry should be clarified to properly identify a Class 037 service.
In International Class 038, the applicant references “Internet fora,” likely indicating the plural form of “forum,” and the applicant must specify the field or subject matter of such forums. The applicant also uses “communications networks” which needs to be clarified as to what type of network is being given access to by the applicant, such as “global computer network” or “local area computer network.” The wording “communications services for the exchange of data in electronic form” must make clear that it is related to telecommunications or transmission of data. The nature of the communications in “communications by means of radio, computer, the Internet, satellite, telematics, cables and digital transmission” must be indicated for purposes of the means by “the Internet.”
In International Class 042, the entry for “Scientific and technological services” is not definite without specifying further what specific types of scientific and technological services are being identified, such as “research and design.” Though the applicant also includes this wording within this entry, the entry is not specified merely to those services and could encompass more, unnamed, “scientific and technological services.” Therefore, the applicant should clarify this entry further. The entry for “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” is unclear because the applicant could be providing “engineering services,” “testing and examinations services” or “consulting and advisory services.” The applicant should either select only one and remove the extraneous wording or break each of these separate entries up by using semi-colons. Furthermore, the wording “tests and examinations” should identify the unit or subject being tested, such as “quality of products of others.” Likewise, the wording “testing and quality control” should indicate that the services are provided on behalf of others, not merely for the internal products of the applicant, and provide the subject of the “testing” portion, such as “product quality.” The applicant’s entry for “programming” appears to indicate programming for software, but uses the indefinite wording “systems.” Therefore, the applicant should clarify what aspect of the “systems” is being programmed, such as “software.” The wording “Technical project studies” is vague and needs to be clarified. This Examining Attorney is unable to arrive at a good suggestion for this entry, but perhaps “technical project planning and design engineering of lines for the processing of web products” or “conducting scientific feasibility studies” is what was intended by the applicant. Finally, the entry for “technical consultancy and construction drafting in the field of stablising surfaces used by vehicles and pedestrians” needs to be clarified. Consulting services are classified according to the subject of what is being consulted on, and “stablising surfaces” could be understood as a construction service in Class 037 or a treatment of materials service in Class 040. However, if the applicant’s consulting services is with regards to a scientific, technological or research based purpose, such as “development of products for stablising surfaces,” then this entry would more likely fit in Class 042. Please see the suggested amendments below.
Applicant should note that any wording in bold, in italics, underlined or in ALL CAPS below offers guidance
and shows the changes being proposed for the identification of goods. If there is wording in the applicant’s version of the identification of goods which should be removed, it will be shown
with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics,
underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 007: “Agricultural equipment, namely, _________ {specify types of agricultural machinery equipment, e.g., tilling machines for agricultural purposes, combines, harvesters},; earthmoving equipment, namely, _______ {specify types of earthmoving machinery equipment, e.g., excavators, grapple bucket attachments, earth moving machines, scrapers},; construction equipment, namely, _______ {specify types of construction machinery equipment, e.g., concrete construction machines, rubber
tracks being parts of construction machines},; oil and gas extraction and mining equipment, namely, ________ {specify types of
oil and gas extractions and mining machinery equipment, e.g., oil-well pumping machines, drilling rig mechanization machines and devices, drills for the mining industry, bits for mining
machines}; machines and machine-driven devices for lifting, and/or 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; _______
{specify whether the parts are structural or replacement in nature or specify the type of part being identified}parts, spare _______ {specify whether the parts are structural or replacement in nature or specify the type of part being identified} parts and accessories in the nature of ________
{specify the type of accessories being identified, e.g., seed drills, grapple buckets} for all the aforesaid goods; components for road making machines,
namely, _______ {specify types of components for road making machines, e.g., asphalt mixers}; components for earth moving machines, namely, _______
{specify types of components for earth moving machines, e.g., attachments for vehicles in the nature of grapple buckets and blades for moving earth and loose objects};
compaction systems for earthworks and road construction comprised of ______ {specify the Class 007 goods which make up the system for compaction, e.g., ground
surface finishing and compacting machines, road rollers}; controllers for road making machines or earth moving machines, namely, joysticks; crane and platform systems comprised of ______ {specify the Class 007 goods which make up the system for crane and platform, e.g., tower cranes, machine operated platforms capable of elevation above
ground level and used for storage, elevating or lifting work platforms}; components for crane and platform systems, namely, _______ {specify types of
components for crane and platform systems, e.g., tower cranes, machine operated platforms capable of elevation above ground level and used for storage, elevating or lifting work platforms};
controllers for crane and platform systems, namely, joysticks being parts of machines other than for game machines; components for brakes for agricultural machines, namely, __________ {specify types of components for brakes for agricultural machines, e.g., brakes for industrial machines, disc brakes being parts of machines, brake
pads, other than for vehicles}; components relating to mining machines, namely, _________ {specify types of components relating to mining machines, e.g.,
bits for mining machines, drills for the mining industry, mine borers}; components relating to earth augers, namely, ________ {specify types of components
relating to earth augers, e.g., drills for the mining industry}.”
Class 009: “Electric measuring apparatus, in particular angle measuring device and
inclinometers; electric electronic control circuits and electronic electrical control apparatus, in particular for regulating and controlling of
inclination, position and speed of _____ {specify the subject of the inclination and position regulation, e.g., platforms, conveyor belts, drills};
electric weighing apparatus and dosing apparatus, namely, ________{specify type of dosing apparatus, e.g., dispensers of preset portions of fluids, solid granules
and powder for dosing purposes, all not for medical use}; electroacoustic ultrasound distance measuring apparatus, namely, ______ {specify the form of the
ultrasound apparatus, e.g., ultrasound probes, ultrasound inspection devices}, in particular for controlling construction equipment and agricultural machines, not for
medical purposes; distance measuring apparatus; recorded content, especially namely, software for
________ {specify function of recorded software, e.g., database management}, data banks in the nature of electronic databases in the field of ______
{specify the field of data, e.g., agricultural earth moving analytics} and electronic data files featuring _______ {specify subject matter featured, e.g., income tax forms, recipes}; information technology and audiovisual apparatus, in particular audio and visual and photographic apparatus
in the nature of ________ {specify type of audio, visual and photographic apparatus, e.g., photographic camera}, thermographic apparatus in the nature of ________ {specify types of thermographic apparatus, e.g., infrared cameras, infrared detection apparatus}, data capture apparatus in the nature of ______ {specify types of data capture apparatus, e.g., video capture cards} and data communications apparatus in the nature of
________ {specify type of data communications apparatus, e.g., electronic and optical communications instrument being optical receivers, communications computers}, and
apparatus for recording, transmission, evaluation and storage of data, namely, ________ {specify types of apparatuses for recording, transmitting, evaluating and
storing data, e.g., portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data,
image, and audio files}; apparatus, instruments and cables for electricity, in particular antennae and electric operating consoles being electrical distribution
consoles; optical equipment and apparatus, namely, _______ {specify types of optical equipment and apparatus, e.g., optical receivers, digital
transmitters}; enhancers and correctors, in particular optical apparatus and instruments in the nature of _______ {specify types of enhancers and correctors
being optical apparatus and instruments, e.g., contrast enhancement filters for electronic display readout windows, color blindness correction glasses}; measuring, detecting and monitoring
instruments, devices and regulators, in particular electric measuring apparatus and regulators in the nature of ______ {specify types of electric measuring
apparatus and regulators, e.g., clamp meters for measuring electricity, voltage regulators for electric power}, electronic sensors and detectors for measuring and detecting
_______ {specify unit being measured by the sensor and being detected by the detector, e.g., radon, carbon monoxide}, temperature measuring instruments in
the nature of ______ {specify types of temperature measuring instruments, temperature sensors, temperature indicators, thermometers other than for medical use}, display
devices in the nature of ______ {specify types of display devices, liquid crystal display projectors, voice display monitors} and operating devices
in the nature of ______ {specify types of operating devices indicating that which is being operated, e.g., electrical
controllers for magnetic bearing control}; electric electronic regulating switches and electrical electronic control apparatus, in particular for regulating and controlling of position, incline, location, speed, concentration, mass,
fullness level or temperature, namely, _______ {specify types of electric regulating switches and electric control apparatus for regulating and controlling
position, incline, location, speed, concentration, mass, fullness level or temperature, e.g., temperature controllers for air-conditioning, electronic speed
controllers}; distance measuring apparatus, electroacoustic ultrasound distance measuring apparatus, namely, ______ {specify the form
of the ultrasound apparatus, e.g., ultrasound probes, ultrasound inspection devices}, in particular for controlling construction equipment and agricultural machines, not for
medical use; navigation, orientation, location tracking, target tracking and mapping equipment, in particular GPS ____ {specify nature of GPS devices by
indicating function, e.g., navigation, tracking}devices and sensors for determining position, distance travelled or speed; _______ {specify whether the
parts are replacement or structural in nature or identify the specific types of parts}parts, spare _______ {specify whether the parts are replacement or
structural in nature or identify the specific types of parts} parts and fittings in the nature of ________ {specify the types of fittings being identified,
e.g., GPS receivers} for the aforesaid goods; electronic identification systems, in particular for the wireless identification of containers comprised of _______ {specify the Class 009 goods which make up the electronic identification system, e.g., radio frequency identification readers}; transponders;
________ {specify whether the computer program is downloadable or recorded}computer programs for the container management; computerised systems for the
identification of containers, the recording their weight and the weight-based billing of charges comprised of _______ {specify the Class 009 goods which make up
the computerised identification system, e.g., radio frequency identification readers}; electrical controls, sensors and detectors in the nature of ______ {specify type of electrical detector, e.g., electrical leak detection hardware with embedded operating system software}, electrical gauges and instruments in the
nature of _______ {specify types of electrical gauges and instruments, e.g., clamp meters for measuring electricity, electronic devices for measuring electric current},
weight measuring instruments and apparatus, and electrical electronic control and integrated video display devices for devices for receiving, lifting,
tilting and emptying of waste disposal of a disposal vehicle or refuse vehicle; _______ {specify whether the parts are replacement or structural in nature or
identify the specific types of parts} parts, _______ {specify whether the parts are replacement or structural in nature or identify the specific types of
parts} spare parts and accessories in the nature of ________ {specify the types of accessories being identified, e.g., GPS receivers} for all the
aforesaid goods; measuring devices for street construction, namely, ______ {specify types of measuring devices for street construction with reference to unit being
measured, e.g., level measuring machines}; measuring devices for earth moving machines, namely, ______ {specify types of measuring devices for earth moving
machines with reference to unit being measured, e.g., level measuring machines}; measuring devices for pavers, namely, ______ {specify types of measuring
devices for pavers with reference to unit being measured, e.g., level measuring machines}; measuring devices for compactors, namely, ______ {specify types
of measuring devices for compactors with reference to unit being measured, e.g., level measuring machines}; compaction measuring systems comprised of ________ {specify Class 009 goods which make up the compaction measuring system, e.g., level indicators}; measuring devices for road-milling machines, namely, ______
{specify types of measuring devices for road-milling machines with reference to unit being measured, e.g., level measuring machines}; electronic machine controllers for road
making machines; 2D and 3D levelling systems for earth moving machines and components therefor comprised of _______ {specify the Class 009 goods which make up the
2D and 3D levelling systems, e.g., level measuring machines}; 2D and 3D electronic control systems for earth moving machines; ______ {specify whether software is recorded or downloadable} software for ______ {specify function of software in relation to road making machines, e.g.,
operating, monitoring} road making machines; ________ {specify whether software is downloadable or recorded}software for controls of __________ {specify that which the software allows the user to control, e.g., machinery} in road construction; ________ {specify whether software is downloadable or recorded} software for levelling systems; ________ {specify whether software is downloadable or
recorded} software for measuring systems in road construction; ________ {specify whether software is downloadable or recorded} software for ______
{specify function of software in relation to earth moving machines, e.g., operating, monitoring} earth moving machines; weighing systems, in particular
scales relating to waste management; electronic controllers for waste disposal vehicles; ________ {specify whether software is downloadable or recorded}
software for ______ {specify function of software in relation to waste disposal vehicles, e.g., operating, monitoring} waste disposal vehicles; ________ {specify whether software is downloadable or recorded} software for ______ {specify function of software in relation to
crane and platform systems, e.g., operating, monitoring} crane and platform systems; electronic machine controllers for crane and platform systems; load cells for crane and platform systems;
______ {specify the nature of the sensors with reference to that which is being measured or indicated, e.g., vibration, proximity, temperature}sensors for
crane and platform systems; inclination sensors for crane and platform systems; communication modules for crane and platform systems, namely, _______ {specify
types of communication modules, e.g., integrated circuit module, microphone module}; electronic machine controllers for agricultural machines; ________ {specify whether software is downloadable or recorded} software for ______ {specify function of software in relation to agricultural machines,
e.g., operating, monitoring} agricultural machines; measuring systems for agricultural machines comprised of _______ {specify the Class 009 goods which make up the measuring systems, e.g., soil sampling equipment in the nature of tubular liners or tubular sleeves}; weighing systems for agricultural
machines comprised of ________ {specify the Class 009 goods which make up the weighing systems for agricultural machines, e.g., weighing scales, weighing machines,
scales and balances}; electronic machine controllers of mining machines; electronic controllers of earth augers; ________ {specify whether software is
downloadable or recorded} software for _______ {specify the function of the software relating to mining machines, e.g., operation of
machines}relating to mining machines; ________ {specify whether software is downloadable or recorded} software for _______
{specify the function of the software relating to earth augers, e.g., operation of machines} relating to earth augers; measuring systems relating to mining machines
comprised of _______ {specify the Class 009 goods which make up the measuring systems, e.g., electronic equipment for mine detection}; measuring systems
relating to earth augers comprised of _______ {specify the Class 009 goods which make up the measuring systems, e.g., electronic equipment for mine
detection}; computer display modules monitors relating to road making machines or earth moving
machines; computer display modules monitors relating to crane and platform systems.”
Class 012: “Components for waste disposal vehicles, namely, _______ {specify types of components for waste disposal vehicles, e.g., spring perches, crankcases for land vehicle components, other than for engines}; parts and fittings for vehicles, namely, electronic devices specifically adapted for use with vehicles for receiving, lifting, tipping and emptying of waste containers of a disposal vehicle or refuse vehicle and ______{specify whether the parts are replacement or structural in nature of specify the types of parts being identified} parts thereof.”
Class 037: “Construction, assembly and demolition, in particular construction of
streets, roads and motorways, consultancy and distribution providing of information in the field of road construction and construction of civil engineering structures; rental of tools and equipment for building work, in particular rental of equipment, installations in
the nature of building equipment and building systems comprised of equipment for construction machinery and construction equipment; installation,
cleaning, repair and maintenance, namely, maintenance of electronic _______ {specify the nature of the equipment with reference to the function of the equipment,
e.g., building, traffic control} equipment and providing of information for installation of electronic equipment, installations in the nature of _______ {specify types of installations, e.g., building equipment} and systems comprised of ________ {specify types of hardware comprising the system,
e.g., building equipment}, and of machines; advisory, consultancy and information services relating to all the aforesaid services; earthmoving in the nature of _______
{specify types of earthmoving services, e.g., excavation services}, street construction; performing manufacturing of surfaces used by vehicles and pedestrians, namely, _______ {specify types of manufacturing of surfaces used by vehicles and pedestrians being identified, e.g., road paving, road construction, tile laying,
bricklaying, block laying, installing floor tile, concrete pouring services}.”
Class 038: “Computer communications and Internet access, in particular electronic data transmission via the Internet or providing of Internet on-line forums for _____ {specify the field or subject matter of the forums,
e.g., road construction} fora; providing of access to electronic databases and communications networks
in the nature of ______ {specify the type of communications networks, e.g., global computer networks, local area computer networks}; telematics
services, namely, _________ {specify type of telematics services, e.g., telematics sending of information, information transmission by telematics codes};
communications services for the electronic exchange of data in electronic form stored in databases accessible via telecommunication networks;
communications in the nature of _______ {specify types of data that will be transmitted by the Internet, e.g., voice communication, data graphics, images, audio,
video} by means of radio, computer terminals, the Internet, satellite, telematics, cables and digital transmission; telecommunication services, namely,
_____ {specify type of telecommunication services, e.g., 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 environmental protection}; 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 _____ {specify types of objects
being rented and leased, e.g., telecommunication lines, telephone booths, telecommunication routers}; consultancy, advisory and information services relating to the aforesaid
services.”
Class 042: “Scientific and technological services, namely, and research and design relating thereto, in particular in the field of building construction; engineering services; , in
particular carrying out technical tests and examinations of ________ {specify the unit or thing being tested, e.g., quality of products of others}
including in the nature of studies of engineering projects being product development,;
product quality testing and quality control for others,; in particular
consultancy and advisory services relating to product quality testing, material testing, quality assurance and quality control; professional consultancy relating to _____ {specify nature of technology, e.g., computer, information, social media, artificial intelligence} 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, ______ {specify type of technical project studies, e.g., technical project planning and design engineering of lines
for the processing of web products, conducting scientific feasibility studies}; technical consultancy and construction drafting in the field of development of products
for stabilising surfaces used by vehicles and pedestrians.”
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.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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).
How to respond. Click to file a response to this nonfinal Office action.
/Daniel Travis Bice/
D. Travis Bice
Trademark Examining Attorney
Law Office 128
Telephone: (571) 272-3385
Email: Daniel.Bice@USPTO.gov
RESPONSE GUIDANCE