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: 5/18/2011

 

This Office action is in response to applicant’s communication filed on April 25, 2011.

 

The following requirement has been satisfied:

 

-         Removal of translation statement and living individual statement

 

The following issues are now raised:

 

IDENTIFICATION OF GOODS IN CLASS 7

 

The identification of goods contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. 

 

Applicant must clarify the identification of goods, namely, “inbound and outbound carousel devices, commonly called make-up or claim devices, used for the presentation of product to personnel or equipment” by specifying what will be done with the product after it is delivered to personnel or equipment.  See TMEP §1402.01.

 

The wording “transfer cars,” “turntables,” “roller spirals and slides and chutes commonly used for transporting product by the use of gravity from one elevation to another,” and “live roller curves” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  For example, “ball transfer units for use in conveyor systems” would be acceptable in Class 7, “machine elements not for land vehicles, namely, turntables, roller spirals and slides and chutes commonly used for transporting product by the use of gravity from one elevation to another” would be acceptable in Class 7, and “live roller curves, namely, roller conveyors” would be acceptable in Class 7.

 

Applicant may substitute the following wording, if accurate.  The wording that appears in bold and/or italics below represents the suggested changes.  Any wording that is crossed out represents matter that must be deleted from the identification.

 

International Class 7: Material handling machines and equipment including the structural parts and structural accessories therefore, namely, vertical and horizontal sorting machines used for sorting product to multiple destinations, commonly known as VSU and tilt tray sortation machines; inbound and outbound carousel devices, commonly called make-up or claim devices, used for the presentation of product to personnel or equipment for the purpose of {insert what the personnel or equipment will then do with the products}; gravity powered live roller and belt conveyors, commonly known as transport conveyors; short powered belt conveyors, commonly called queue conveyors; chain driven live roller conveyors; slat conveyors; pusher bar conveyors; wheel conveyors; chain conveyors; conveyor drives commonly used in the transportation of product; transfer cars,  namely, {insert common commercial name in Class 7, e.g., ball transfer units for use in conveyor systems}; machine elements not for land vehicles, namely, turntables, roller spirals and slides and chutes commonly used for transporting product by the use of gravity from one elevation to another; live roller curves, namely, roller conveyors and vertical chain conveyors

 

International Class 42: Engineering services in connection with the design and installation of vertical sortation and material handling equipment and systems incorporating the same

 

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.

 

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.

 

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:

International Class 7: Material handling machines and equipment including the structural parts and structural accessories therefore, namely, vertical and horizontal sorting machines used for sorting product to multiple destinations, commonly known as VSU and tilt tray sortation machines; inbound and outbound carousel devices, commonly called make-up or claim devices, used for the presentation of product to personnel or equipment for the purpose of {insert what the personnel or equipment will then do with the products}; transfer cars,  namely, {insert common commercial name in Class 7, e.g., ball transfer units for use in conveyor systems}; machine elements not for land vehicles, namely, turntables, roller spirals and slides and chutes commonly used for transporting product by the use of gravity from one elevation to another; live roller curves, namely, roller conveyors

The application will then proceed with the following goods and services only:

International Class 7: gravity powered live roller and belt conveyors, commonly known as transport conveyors; short powered belt conveyors, commonly called queue conveyors; chain driven live roller conveyors; slat conveyors; pusher bar conveyors; wheel conveyors; chain conveyors; conveyor drives commonly used in the transportation of product; vertical chain conveyors

International Class 42: Engineering services in connection with the design and installation of vertical sortation and material handling equipment and systems incorporating the same

See 37 C.F.R. §2.65(a); TMEP §718.02(a).  In such case, applicant’s only option would be to file a timely petition to revive the abandoned goods, which, if granted, would allow for the reinsertion of these goods into the application.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal, or submission of a declaration signature, applicant is encouraged to telephone the examining attorney to resolve the issue(s) raised in this Office Action.

 

/Lindsey H. Rubin/

Trademark Examining Attorney

Law Office 108

Phone: 571-272-4239

Lindsey.Rubin@uspto.gov

(not for formal responses)

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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 trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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 5/18/2011 FOR

SERIAL NO. 85166838

 

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 5/18/2011 (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.