UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FINAL OFFICE ACTION – PARTIAL REQUIREMENTS

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID PARTIAL 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: 12/28/2015

 

 

THIS IS A FINAL ACTION.

 

 

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. 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 2, 2015.

 

In a previous Office action(s) dated June 2, 2015, the applicant was required to satisfy the requirement to amend the identifications of goods and services in International Classes 7, 9, 11, 17, 19, 21, 41 and 42. 

 

Based on applicant’s response, the trademark examining attorney notes that requirement for providing definite identifications in International Classes 17 and 19 has been satisfied.    See TMEP §§713.02, 714.04.   Additionally, the amended identification of services in International Class 35 is accepted.

 

Further, the trademark examining attorney maintains and now makes FINAL the 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:

• Identification of goods requirement – International Class 7
• Identification of goods requirement – International Class 9
• Identification of goods requirement –International Class 11
• Identification of goods requirement – International Class 21
• Identification of services requirement – International Class 41
• Identification of services requirement – International Class 42

 

Identification Of Goods – International Class 7

The wording “hydraulically operated remote control valves” 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.  While valves for pumps are classified in International Class 7, valves for other purposes are classified in other classes.  For example, direction control valves for use in automated production machinery are classified in International Class 9.  Additionally, hose reels are generally classified based upon their composition, and since the applicant’s original identification was limited to power-operated hose reels, the identification may not be amended to include spring-retracted hose reels, which are generally not power-operated.

 

Identification Of Goods – International Class 9

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  While terms such “automatic controls for irrigation systems” may be considered a common commercial term in the industry, the United States Patent and Trademark Office requires specificity with regard to identifications.  Automatic controls  could include a variety of goods that fall under the aegis of this wording, and the identification must be specific, definite and concise. 

 

Additionally, the identification of goods in International Class 9 includes a duplicate entry of the wording “timers.”  Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §707.02.  However, if applicant modifies the goods and/or services, applicant may do so only to clarify or limit them; 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. 

 

 

 

Identification Of Goods – International Class 11

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.  Hydraulic and pneumatic valve actuators are classified in International Class 7, while electric valve actuators are classified in International Class 9.  The applicant must specify the particular type of actuators utilized in irrigation systems, and properly classify the goods.  The applicant must also identify each product using common commercial terms.  While an “irrigation bubbler” may be a term of art in the industry, it could include a variety of goods and the identification must be specific, definite and concise.

 

Identification Of Goods – International Class 21

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.  Water sprinklers could include fire sprinklers in International Class 9, irrigation sprinklers in International Class 11, and lawn sprinklers in International Class 21.  Similarly, sprinkler systems for fire protection are classified in International Class 9, while sprinkler systems for lawns are classified in International Class 11 if they comprise pumps, valves and filters.  The identification must be specific, definite and concise.

 

 Identification Of Services – International Class 41

The identification of services must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03.  Information services are presumably provided for educational purposes.  Unless the information services are specifically identified as a type of educational services such as classes of instruction, the services are classified based upon subject matter.  Merely indicating that information is provided for educational purposes does not justify classification of the services in International Class 41, as all information services presumably education consumers. 

 

Identification Of Services – International Class 42

The identification of services must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03.     For example, technical consulting services could include a wide variety of services in more than one international class.  Similarly, design services could include a variety of services and the identification must be specific, definite and concise.

 

Suggested Identifications Of Goods And Services

Applicant may substitute the following wording, if accurate: 

 

Water treatment equipment, namely, pumps for use in irrigation systems; pump control valves; hydraulically operated remote control valves for [indicate function, e.g., pumps]; centrifugal pumps; submersible pumps; centrifugal separators; power-operated watering and/or irrigation hose reels in International Class 7; and/or

 

Automatic electrical controls for irrigation systems; irrigation controllers in the nature of [clarify goods, e.g., electronic and electro-mechanical irrigation controls for use in residential and commercial irrigation systems]; environmentally responsive electronic controllers for irrigation systems; decoder electrical controllers for irrigation systems; encoder modules and decoder circuits for operating electronic irrigation controllers; electrical and electronic station modules for expanding the zone operating capacity of electronic irrigation controllers; electronic control modules and electronic accessory components in the nature of [clarify each “accessory” component using common commercial terms] for electronic irrigation controllers; remote controls for irrigation systems; electric and electronic irrigation control panels; wireless electronic devices for use with irrigation controllers for controlling, operating, monitoring, managing, and/or analyzing irrigation systems and irrigation and other functions, namely, [specify functions using common commercial terms]; timers; transceivers; transmitters of electronic, optical, digital, radio, and/or data signals; transformers; control valves for regulating the flow of liquids; solenoid valves; power supplies; software and computer hardware for controlling, monitoring and/or analyzing irrigation systems and environmental conditions; computer software and hardware for controlling, monitoring and/or analyzing irrigation systems, environmental data, and growing conditions; computer programs and instruction manuals in electronic format for use with controlling, operating, monitoring, managing, and/or analyzing irrigation systems; electric sensors for use with operating irrigation controllers and/or irrigation systems; pressure gauges; rain gauges; gauges for use with irrigation systems in the nature of [indicate what is being gauged, e.g., pressure gauges]; surge protectors; electrical connectors; electrical switches; electrical wire; wire connectors; plug-in connectors; integrated circuit modules; automatic valves; solar cells; anemometers; pressure relief valves for use with drainage pipes; lighting controls; calculators; downloadable software in the nature of a mobile application for the control and monitoring of irrigation systems; sonic devices for algae control that prevent algae growth; water meters; audio and video recordings about irrigation, about irrigation systems and equipment, and about water usage, conservation, and management; downloadable educational course materials in the fields of water conservation and science; hydraulically operated remote control valves in the nature of automatic control valves; electric valve actuators; non-metal cabinets, housings, and boxes in the nature of containers specially adapted for housing electronic irrigation controllers and automatic irrigation valves; electric valve actuators for use in irrigation systems  in International Class 9; and/or

 

Irrigation sprinklers; irrigation sprinkler structural parts; irrigation systems composed of irrigation sprinklers, valves, valve actuators, controllers, hoses and tubing, and other component and replacement parts therefor for watering or irrigation of agricultural crops, lawns, turf, horticultural and ornamental plants; lawn sprinkler systems comprising pumps, valves, and filters; irrigation systems comprising irrigation sprinklers, irrigation spray bodies in the nature of [clarify nature of spray bodies], spray nozzles, water emitters, valves, valve actuators, electronic controllers, sensors, timers, irrigation piping and tubing, filters, and replacement parts therefor; dripper irrigation systems comprising irrigation tubing, water emitters, water bubblers, valves, valve actuators, filters, electronic controllers, sensors, and replacement parts therefor; valves being parts of irrigation systems and valve replacement parts therefor; valves being parts of sprinkler systems;  irrigation spray nozzles; irrigation spray bodies in the nature of [clarify nature of spray bodies]; sprinkler heads for irrigation sprinklers; rotors as component parts for irrigation sprinklers for controlling the direction of irrigation spray nozzles; drip irrigation emitters; irrigation bubblers in the nature of [clarify goods]; non-metal pipe and tube fittings as structural parts of irrigation systems; non-metal water distribution manifolds for irrigation systems; water filters; water filters and filtering devices for irrigation systems; irrigation system water filters and water filter screens; pressure regulators for irrigation watering systems; water filtering apparatus; water filtering units for commercial, municipal or industrial use; water purification and filtration apparatus; water purification, sedimentation and filtration apparatus for clarification, thickening and filtration of water, waste water and industrial water; dust control systems comprising irrigation sprinklers and electronic controllers in International Class 11; and/or

 

Water sprinklers for [clarify function, e.g., grass and lawns]; water sprinkler systems for [indicate function, e.g., lawns] comprising sprinklers, nozzles, emitters, valves, fittings, and couplings and structural parts for the foregoing; sprinklers and sprinkler structural parts for watering plants, flowers, gardens, and lawns; sprinkler heads for watering plants, lawn, and/or garden; sprinkler nozzles for watering plants, lawn, and/or garden; sprinkler emitters in the nature of [clarify goods, e.g., component part of lawn sprinklers]; hose nozzles; sprayers attached to garden hoses; basins in International Class 21; and/or

 

Training services in the fields of irrigation, water conservation and management, landscape irrigation design, and the design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of training and course materials in connection therewith; training in the use, design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of training and course materials in connection therewith; educational services, namely, providing continuing professional education courses in the fields of irrigation, water conservation and management, landscape irrigation design, and the design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of course materials in connection therewith; business training in International Class 41; and/or

 

New product design services for designing irrigation, watering, and sprinkler systems; technical engineering consulting services in the field of irrigation; technical engineering consulting services in the field of irrigation systems and design of irrigation systems; providing a website featuring technology that enables users to monitor, control, and analyze irrigation and irrigation systems, to monitor and analyze environmental data and conditions, to prepare reports on irrigation and irrigation systems data and/or environmental data and conditions, to store and maintain irrigation and environmental data; providing online, non-downloadable software for monitoring, controlling and analyzing irrigation and irrigation systems and environmental conditions and growing environments, for monitoring and analyzing environmental data and conditions, for generating and providing alerts and notifications concerning irrigation systems and environmental and growing conditions, for preparing reports on irrigation, irrigation systems, and/or environmental data and conditions, for storing and maintaining irrigation and environmental data; providing technological and scientific information about water conservation and water usage management in International Class 42.

 

Additions To Identification Not Permitted

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.

 

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.

 

 

 

CONCLUSION

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: hydraulically operated remote control valves; spring-retracted hose reels in International Class 7; Automatic controls for irrigation systems; irrigation controllers; decoder controllers for irrigation systems; electronic control modules and electronic accessory components for electronic irrigation controllers; and other functions; sensors for use with operating irrigation controllers and/or irrigation systems; gauges for use with irrigation systems; non-metal cabinets, housings, and boxes in the nature of containers specially adapted for housing irrigation controllers in International Class 9; and/or other component and replacement parts therefor; spray bodies; valve actuators for use in irrigation systems; irrigation spray bodies; irrigation emitters; irrigation bubblers; irrigation system filters and filter screens; pressure regulators for irrigation systems; non-metal cabinets, housings, and boxes in the nature of containers specially adapted for housing irrigation valves in International Class 11; Water sprinklers; water sprinkler systems, comprising sprinklers, nozzles, emitters, valves, fittings, and couplings and structural parts for the foregoing; sprinkler emitters in International Class 21; providing information about water conservation and water usage management for educational purposes in International Class 41; and Design services for designing irrigation, watering, and sprinkler systems; technical consulting services in the field of irrigation; technical consulting services in the field of irrigation systems and design of irrigation systems in International Class 42.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services:  Water treatment equipment, namely, pumps for use in irrigation systems; pump control valves; centrifugal pumps; submersible pumps; centrifugal separators; power-operated watering and/or irrigation hose reels in International Class 7; environmentally responsive electronic controllers for irrigation systems; encoder modules and decoder circuits for operating electronic irrigation controllers; electrical and electronic station modules for expanding the zone operating capacity of electronic irrigation controllers; remote controls for irrigation systems; electric and electronic irrigation control panels; wireless electronic devices for use with irrigation controllers for controlling, operating, monitoring, managing, and/or analyzing irrigation systems and irrigation; timers; transceivers; transmitters of electronic, optical, digital, radio, and/or data signals; transformers; control valves for regulating the flow of liquids; solenoid valves; power supplies; software and computer hardware for controlling, monitoring and/or analyzing irrigation systems and environmental conditions; computer software and hardware for controlling, monitoring and/or analyzing irrigation systems, environmental data, and growing conditions; computer programs and instruction manuals in electronic format for use with controlling, operating, monitoring, managing, and/or analyzing irrigation systems; pressure gauges; rain gauges; surge protectors; electrical connectors; electrical switches; electrical wire; wire connectors; plug-in connectors; integrated circuit modules; automatic valves; solar cells; anemometers; pressure relief valves for use with drainage pipes; timers; lighting controls; calculators; downloadable software in the nature of a mobile application for the control and monitoring of irrigation systems; sonic devices for algae control that prevent algae growth; water meters; audio and video recordings about irrigation, about irrigation systems and equipment, and about water usage, conservation, and management; downloadable educational course materials in the fields of water conservation and science; hydraulically operated remote control valves in the nature of automatic control valves; electric valve actuators in International Class 9; Irrigation sprinklers; irrigation sprinkler structural parts; irrigation systems composed of irrigation sprinklers, valves, valve actuators, controllers, hoses and tubing, for watering or irrigation of agricultural crops, lawns, turf, horticultural and ornamental plants; lawn sprinkler systems comprising pumps, valves, and filters; irrigation systems comprising irrigation sprinklers, spray nozzles, water emitters, valves, valve actuators, electronic controllers, sensors, timers, irrigation piping and tubing, filters, and replacement parts therefor; dripper irrigation systems comprising irrigation tubing, water emitters, water bubblers, valves, valve actuators, filters, electronic controllers, sensors, and replacement parts therefor; valves being parts of irrigation systems and valve replacement parts therefor; valves being parts of sprinkler systems; irrigation spray nozzles; sprinkler heads for irrigation sprinklers; rotors as component parts for irrigation sprinklers for controlling the direction of irrigation spray nozzles; non-metal pipe and tube fittings as structural parts of irrigation systems; non-metal water distribution manifolds for irrigation systems; water filters; water filters and filtering devices for irrigation systems; water filtering apparatus; water filtering units for commercial, municipal or industrial use; water purification and filtration apparatus; water purification, sedimentation and filtration apparatus for clarification, thickening and filtration of water, waste water and industrial water; dust control systems comprising irrigation sprinklers and electronic controllers in International Class 11; sprinklers and sprinkler structural parts for watering plants, flowers, gardens, and lawns; sprinkler heads for watering plants, lawns, and/or gardens; sprinkler nozzles for watering plants, lawns, and/or gardens; hose nozzles; sprayers attached to garden hoses; basins in International Class 21; Training services in the fields of irrigation, water conservation and management, landscape irrigation design, and the design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of training and course materials in connection therewith; training in the use, design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of training and course materials in connection therewith; educational services, namely, providing continuing professional education courses in the fields of irrigation, water conservation and management, landscape irrigation design, and the design, installation, operation, maintenance, and repair of irrigation systems and irrigation equipment and distribution of course materials in connection therewith; business training in International Class 41; and providing a website featuring technology that enables users to monitor, control, and analyze irrigation and irrigation systems, to monitor and analyze environmental data and conditions, to prepare reports on irrigation and irrigation systems data and/or environmental data and conditions, to store and maintain irrigation and environmental data; providing online, non-downloadable software for monitoring, controlling and analyzing irrigation and irrigation systems and environmental conditions and growing environments, for monitoring and analyzing environmental data and conditions, for generating and providing alerts and notifications concerning irrigation systems and environmental and growing conditions, for preparing reports on irrigation, irrigation systems, and/or environmental data and conditions, for storing and maintaining irrigation and environmental data; providing technological and scientific information about water conservation and water usage management in International Class 42; as well as all of the goods in International Classes 17 and 19.

 

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.

 

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Examining Attorney

Law Office 110

571-272-9370

andrea.nadelman@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 12/28/2015 FOR U.S. APPLICATION SERIAL NO. 86543236

 

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 12/28/2015 (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.