To: | Phoenix Contact GmbH & Co. KG (clarissa@richardlawgroup.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86882777 - P - PHNX-0018 |
Sent: | 5/12/2016 2:16:36 PM |
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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OFFICE ACTION
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: 5/12/2016
The trademark examining attorney has searched the Office’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).
SUMMARY OF ISSUES
SPECIMENS REQUIRED
Specimen Required--International Classes 8 and 9
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a true, unaltered copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.
(2) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/S5.jsp.
Specimen Required—International Class 16
Registration is refused because the specimen in International Class 16 appears to have been digitally created and thus does not show the applied-for mark in use in commerce for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). An image that has been digitally created or altered to show the applied-for mark on or in connection with applicant’s goods usually has not been disseminated to the public, and thus does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
In this case, the specimen appears to be a digital rendering or mock-up of a label used to make corrections and not a finished good disseminated to the public. Specifically, the good appears pixelated with a floating shadow on a blue background. Thus, this specimen does not show use of the mark in commerce in connection with the identified goods.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags and labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Applicant should note the additional issues discussed below.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Further, the following wording is indefinite and must be clarified to further indicate the nature and purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.
A summary of the problematic wording in the identification of goods is included below for applicant’s convenience.
Problematic Wording |
Reason Unacceptable |
Suggestion |
Electrical controls system for use in the field of industrial processes |
Applicant must specify the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. |
Electrical controls system consisting of {please specify the parts or components, e.g., electric switches, electrical power supplies, electricity routers} for use in the field of industrial processes |
Apparatus and instruments for electrical engineering, namely, for conducting, transforming, storing, regulation and control |
The wording “apparatus” and “instruments” does not clearly indicate the nature of the goods. Further, applicant should indicate what is being conducted, transformed, stored, regulated, and controlled. |
Apparatus and instruments in the nature of {please specify the common commercial name of the goods, e.g., electrical controllers, energy meters} for electrical engineering, namely, for conducting, transforming, storing, regulation and controlling electricity |
Electrical apparatus for the remote control of industrial operations |
The wording “apparatus” must be clarified to specify the common commercial names of the goods. |
Electrical apparatus in the nature of {please specify the common commercial name for the goods, e.g., wireless transmitters and receivers} for the remote control of industrial operations |
Electrical HMI (human machine interface) controllers |
The wording is unacceptable because the function and intended use of the goods is not clear. |
Electrical HMI (human machine interface) screen controllers |
Apparatus and instruments for communications engineering, namely, for communications, high frequency and control engineering |
The wording “apparatus” and “instruments” does not clearly indicate the nature of the goods. Further, “for high frequency” must be clarified to indicate the high-frequency goods for which these instruments and apparatus are intended. |
Apparatus and instruments namely, {please specify the common commercial name of the goods, e.g., radio transmitters, radios, electric switches} for communications engineering, namely, for communications , high frequency and control engineering |
Electric measuring devices, namely, electronic-based instruments for measuring the industrial process control parameters used in the field of industrial automation controls |
The nature and purpose of the goods is unclear. Applicant should use the common commercial or generic name for the applied-for goods. |
Electric measuring devices, namely, electronic-based instruments for measuring the industrial process control parameters specifically, antenna parameter measuring apparatuses used in the field of industrial automation controls |
Accessories for marking electrical terminals, namely, cable and wiring markers |
Applicant should further clarify the nature of the “markers.” Specifically, applicant should clarify whether these goods are in the nature of metal tags, writing markers, or nonmetal tags. |
Accessories for marking electrical terminals, namely, cable and wiring markers in the nature of metal tags. *Note: If applicant adopts this wording, applicant should reclassify the goods as indicated below. |
Electronic […] router |
Applicant should further clarify whether this is a good that that regulates electricity or whether this is a good in the nature of a wireless or network router. |
Electricity router for managing and optimizing energy loads within a building
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Earthed conductor lead binders |
Applicant should clarify the nature of the goods to indicate whether these are a finished good or whether these are a raw material used in the manufacture of semiconductors. Applicant should also clarify the nature of the “earthed conductors,” e.g, whether these goods are insulators for controlling electrical charges. |
Grounded electrical conductors having a lead binder |
Applicant may substitute the following wording, if accurate:
International Class 6: Accessories for marking electrical terminals, namely, cable and wiring markers in the nature of metal tags
International Class 7: Power drill bits; motor starters
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 {please specify the parts or components, e.g., electric switches, electrical power supplies, 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 router for managing and optimizing energy loads within a building; electrical HMI (human machine interface) screen controllers; computers; industrial computers; Apparatus and instruments in the nature of {please specify the common commercial name of the goods, e.g., electrical controllers, energy meters} 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, antenna parameter measuring apparatuses 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; print heads for printers and plotters; voltage surge protectors
International Class 16: Printing paper; printed paper labels and signs; paper labels; shipping, adhesive and address labels; pens; pens for marking
If applicant chooses to adopt the suggested wording in International Classes 6 and 7, applicant should comply with the multiple-class application requirements discussed below.
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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 that are potentially classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 3 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. The current specimens are not acceptable for any 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods 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.
ASSISTANCE
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.
/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.