UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/7/2011

 

THIS IS A FINAL ACTION.

 

This letter is in response to applicant’s communication filed January 17, 2011.  The requirement for the significance of the mark is satisfied and is now withdrawn.  The requirement for acceptable identification of goods is maintained and made final.

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable because it includes wording that is vague, misclassified, or outside the scope of the original identification.  All the wording in the amended identification, except the following wording, “parts, fittings and components for geothermal heating and cooling systems, namely, single-stage geothermal heat pumps,” “two-stage geothermal heat pumps,” and “water-source heat pumps” is indefinite, misclassified or outside the scope of the original identification.  See TMEP §1402.01.  Applicant must amend the identification by listing each item by its generic or common commercial name.  

 

The wording “pressurized, (non-pressurized or double O-ring pumping module (also called a "flow center") for circulating fluid through a loop field and a heat pump's heat exchanger, hoses, couplings and other components necessary to connect the foregoing system components,” “pressurized flow controllers used to circulate pressurized fluid through a loop system, through the heat pump's heat exchanger, and back out through the loop field,” “gas water heater for bathtub consisting of circulation pump with thermostat to fill, re-heat water and keep water warm,” “non-pressurized flow controllers used to circulate fluid through a loop system, through the heat pump's heat exchanger, and back out through the loop field,” “parts for installing geothermal heating and cooling systems, namely, pressure-temperature plugs, couplings, transition sockets, tees and elbows, gauge adapter pressure-temperature plugs, insert adapters, hot-water concentric connectors, heat pump adapters, double O-ring adapters” appears to be outside the scope of the original wording.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

Applicant should note the suggestions and/or explanations in bold in the proposed identification below.

 

The applicant is strongly urged to consult the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html for assistance with identifying and classifying goods and services in this trademark application.

 

 

Applicant may adopt the following identification, if accurate:  

 

International Class 006

 

Metal hoses for plumbing use, namely, stainless steel hoses for use to connect water source with heat pumps

 

International Class 009

 

Flow meters

 

International Class 011

 

Parts, fittings and components for geothermal heating and cooling systems, namely, single-stage geothermal heat pumps; two-stage geothermal split systems containing a geothermal heat pump, namely, [specify the major components of the systems or specify the common commercial names of the goods]; two-stage geothermal heat pumps; geothermal water-to-water systems comprising a geothermal heat pump, pressurized or non-pressurized pumps for circulating water through the loop field and heat pump for heat exchangers, not being machine parts, all used in radiant floor heating and cooling systems and in other residential and commercial applications requiring hot or chilled water; water-source heat pumps; pressure boosters used in closed-loop geothermal-based HVAC units to maintain loop pressure in case of small leaks; flush systems for starting and maintaining geothermal-based HVAC units, comprising a pump and gravity drains, couplings to connect to a geothermal HVAC units, a filter screen and a switching box, all sold as unit with geothermal-based HVAC units

 

International Class 019

 

Fusion kits sold as a component part of polyethylene pipes used in geothermal heating and cooling systems, for fusing high density polyethylene pipe sections and components such as tees and elbows used in geothermal heating and cooling systems, the kits comprising a depth gauge, hex keys, socket faces, cold rings, cutters, timers, and mounting brackets;

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services:

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

This requirement is maintained and made final.

 

PROPER RESPONSE TO FINAL OFFICE ACTION/ABANDONMENT OF GOODS

 

If applicant does not respond within six months of the date of issuance of this final Office action, the goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: . 

 

The application will then proceed for the following goods:  parts, fittings and components for geothermal heating and cooling systems, namely, single-stage geothermal heat pumps; two-stage geothermal heat pumps; water-source heat pumps

 

 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 105

(571) 272-9292

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/7/2011 FOR

SERIAL NO. 85073495

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 3/7/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.