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: 2/22/2016

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 5, 2016.

 

In a previous Office action(s) dated May 26, 2015, applicant was required to amend the identification of goods and/or services, clarify its entity type, and sign and verify the application.

 

Based on applicant’s response, the trademark examining attorney notes that the requirements to clarify its entity type and sign and verify the application have been satisfied.  See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• FINAL REQUIREMENT: Identification of Goods and Services

 

 

FINAL REQUIREMENT: IDENTIFICATION OF GOODS AND SERVICES

 

The requirement for an acceptable identification of goods and services is now made FINAL for the reasons set forth below.  37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1402.01.

 

The wording “dust collectors” 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.  Applicant has classified these goods in International Class 11, but, for example, “dust collecting machines for chemical processing” belong in International Class 7.  Applicant must specify the common commercial name of these goods and classify them properly.

 

The identification of goods includes the wording “filter systems.” The word “system” in the identification of goods is indefinite and must be amended to (1) list the primary parts or components of the system and (2) describe the nature, purpose, or use of the system.  TMEP §1401.05(d).  Applicant should use common generic terms to specify the parts or components of the system.  See TMEP §§1402.01, 1402.03(a).  Applicant should also classify the system in the same international class as its primary parts or components.  TMEP §1401.05(d). 

 

The wording “electric or electrostatic filters, reheaters, pre-heaters, diffusors such as exhaust-gas diffusors, cooling towers” 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. 

 

Goods in International Class 11 modify the environment around them in some manner.  In this case, the environmental element that these goods modify is unclear.  For example, do “reheaters” heat water or air? Applicant must specify this information to clarify the goods.

 

Additionally, applicant should consider whether these goods belong in International Class 11 at all. For example, “diffusers used in machines for wastewater and clearwater treatment” are classified in International Class 7 because they are a machine part, but diffusors for a specific application are classified in International Class 11.  Consulting the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html is highly recommended.

 

The wording “conduits, pipes, tubes” 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, “electricity conduits” belong in International Class 9, but “plastic conduits for drainage” belong in International Class 19.  Additionally, “pipes of metal” and “metal tubes” belong in International Class 6, but “flexible plastic pipes for plumbing purposes” and “flexible tubes of plastic” belong in International Class 17.

 

The identification of goods is indefinite and must be clarified because it contains the open-ended wording “other combustion devices,” “other industrial sites,” and “such as.”   See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with the common commercial names of these goods.  Alternatively, applicant may delete this indefinite wording.

 

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.

 

The wording “Construction, maintenance, and repair of combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites; installation of combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites” in the identification of services is indefinite and must be clarified because the nature of the goods or buildings constructed, installed, maintained, and repaired is unclear.  See TMEP §1402.01.  Applicant must specify the common commercial names of the goods or buildings constructed, maintained, and repaired.

 

To address the issues discussed above, applicant may adopt any or all of the following identification of goods, if accurate.  Suggested changes are indicated in bold, strikethrough, and underlined fonts.  If adding international classes, applicant must follow the multiple-class application requirements detailed below:

 

International Class 1:	Catalysts for chemical and biochemical processes, namely, catalysts for industrial catalytic reduction installations
International Class 6:	Pipes of metal; metal tubes.
International Class 7:	Industrial chemical reactors, namely, catalytic reactors; dust collecting machines for chemical processing.
International Class 11:	Apparatuses for steam generating units in the nature of specialized components for steam generators, namely, gas mixers, baffles, gas baffles, gas shields, plates, deflector plates, leading edge vortices generating plates, sheets for deflector devices, turbulence generating profiles, pipes, tubes, ducts, parts and fittings of aforesaid goods, all for use in power plants and combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites; dust collectors, filter systems for {specify purpose of system} comprised primarily of {list primary components};, electric or electrostatic filters, reheaters, pre-heaters, diffusors such as exhaust-gas diffusors, cooling towers, {specify environmental element modified, e.g., water cooling towers} conduits, pipes, tubes, all for use in the fields of power plants and combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces, Denox plants, pollutant control equipment, flue gas cleaning equipment, devices for purification of waste gases; catalytic reactor for selectively reducing emissions from flue gases for power plants and combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites applications; Burners and other combustion devices used for the control and the reduction of nitrous oxide emissions.
International Class 19:	Plastic conduit for drainage; flexible pipes for plumbing purposes; flexible tubes of plastic.
International Class 37:	Construction, maintenance, and repair of power plants; Construction, maintenance, and repair of combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites {specify common commercial names of goods or buildings, e.g., warehouses, power plants}; installation of combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites {specify common commercial names of goods or buildings, e.g., warehouses, power plants}; construction of industrial catalytic reduction installations, namely, for power plants and combined heat, heat exchangers and power applications.
International Class 42:	Scientific and industrial research in the fields of energy and power; engineering services; technological consultancy, in particular in the fields of industrial plants, power plants and combined heat, heat exchangers and power applications, as well as waste incineration or glass furnaces and other industrial sites, fluid mechanics; technological consultancy in the field of nitrous oxide emissions; computer programming.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

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

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

Proper response to a final action full refusal

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

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

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  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).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 102

(571) 272-3681

april.reeves@uspto.gov

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/22/2016 FOR U.S. APPLICATION SERIAL NO. 86530630

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 2/22/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.