To: | Phoenix Contact GmbH & Co. KG (clarissa@richardlawgroup.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86882777 - P - PHNX-0018 |
Sent: | 11/8/2016 10:05:10 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86882777
MARK: P
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Phoenix Contact GmbH & Co. KG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY 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: 11/8/2016
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On 11/8/16, the trademark examining attorney and Jim Struthers discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(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 5 classes; however, applicant submitted a fee(s) sufficient for only 4 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.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. Applicant has submitted an acceptable specimen for each international class.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) 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.
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not 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.
IDENTIFICATION AND CLASSIFICATION OF GOODS
The identification of goods is amended to read as follows:
International Class 6: Accessories for marking electrical terminals, namely, cable and wiring markers in the nature of metal tags
International Class 8: Hand tools, namely, insulation stripping tools, wire strippers, cable cutters, profile cutters, crimping tools; screwdrivers; pliers; pressing pliers and squeezing pliers for electrical cables; wire cutters; drill bits for hand drills
International Class 9: Electronic instruments, namely, amplifiers; electronic signal transmitters; electrical relays; energy meters; industrial automation controls; electrical controls system consisting of electric switches, electrical power supplies and electricity routers for use in the field of industrial processes; electrical apparatus for the remote control of industrial operations; integrated circuit modules, namely, input-output (I/O) modules; electrical controllers, namely, input-output (I/O) modules; electrical power supplies; electric switches, electronic switches; electricity routers for managing and optimizing energy loads within buildings and industrial plants; electronic network routers; electrical HMI (human machine interface) screen controllers; computers; industrial computers; apparatus and instruments in the nature of electrical controllers, energy meters, transformers and accumulators for electrical engineering, namely, for conducting, transforming, storing, regulation and controlling electricity; data-processing apparatus; electric junction boxes and electrical connection boxes; electric display apparatus, namely, electric control panels and electric luminescent display panels; electric measuring devices, namely, electronic-based instruments for measuring the industrial process control parameters, specifically pressure, temperature, flow rate, filling level, voltage and electricity, used in the field of industrial automation controls; switching equipment, namely, switchgears; electric transformers; electric resistors; electricity distribution consoles and switchboards; electric voltage transformers, current transformers; electrical terminals in the nature of electric connections and connectors for connecting and joining electrical cables, namely, terminal blocks, two-tier terminal blocks, lead-through terminal blocks, high current terminal blocks, installation terminal blocks, switchable terminal blocks, grounded electrical conductors having a lead binder, fuse terminal blocks, universal terminal blocks, tension spring terminal blocks and terminal blocks for connecting to DIN rails; testing accessories, namely, continuity test connectors for testing electronic circuits and short circuit connectors for electronic circuits; accessories for bridging electrical terminals, namely, electrical jumpers and electrical bypasses in the nature of jumper cables, electrical switches and electronic circuits; voltage surge protectors
International Class 16: Printing paper; printed paper labels and signs; paper labels; shipping, adhesive and address labels; pens; pens for marking
International Class 20: Accessories for marking electrical terminals, namely, cable and wiring markers in the nature of plastic tags
See TMEP §§1402.01, 1402.01(e).
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 or e-mail without incurring this additional fee.
/Diane Collopy/
Examining Attorney
Law Office 107
diane.collopy@uspto.gov (informal communications only)
(571) 270-3118
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.