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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/10/2018

 

 

 

This Office action responds to applicant’s communication dated April 19, 2018 where applicant:

 

1. Submitted a copy of the foreign registration;
2. Amended the identification of goods.

The examining attorney has reviewed the applicant’s response and determined the following:

1. The copy of the foreign registrations are acceptable, however, the identification on the registration creates additional issues.  Therefore, new requirements are now issued.
2. The amendment to the identification of goods is not entirely acceptable, therefore, the identification of goods and class clarification requirements are continued and maintained.
3. As stated in the Suspension letter the Section 2(d) Refusal for Registration No.  3451924 is continued and maintained;
4. The potential refusal for Serial No. 86668202 has been withdrawn.

SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE:  Out Of Scope Identification Of Goods – Amendment Required
• NEW ISSUE: Applicant Must Identify Which Registration Corresponds to Which Goods

Applicant must respond to all issues raised in this Office action and the previous 08/16/2016 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

OUT OF SCOPE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

 

 

Particular wording in the U.S. application’s identification of goods is not acceptable because it exceeds the scope of the goods in the foreign registration upon which the U.S. application relies for a basis under Trademark Act Section 44.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

Class 07

 

In this case, the U.S. application identifies the particular goods as follows:  “Industrial robots; Robotic arms for industrial purposes; Industrial robots for use in the handling of workpieces; Service Robot; Collaborative Robot; Industrial robots for disaster response.” 

 

However, the foreign registration identifies the following goods:  “Industrial Robots other than for manufacturing semiconductors; Robotic arms for industrial purposes other than for manufacturing semiconductors; Industrial robots for supports and assisting other than for manufacturing semiconductors; Industrial Robots for personal supports and assisting other than for manufacturing semiconductors; Industrial Service Robot other than for manufacturing semiconductors; Industrial Robot for Collaborative purposes other than for manufacturing semiconductors; Industrial robots for disaster-relief other than for manufacturing semiconductors.”

 

These goods in the U.S. application exceed the scope of goods in the foreign registration because the foreign registration excludes the use for manufacturing semiconductors.  Further, “service robot” and “collaborative robot” are not modified by the wording “industrial” as they are in the foreign registration, making these terms indefinite and overly broad as well as out of the scope of the foreign identification.  Further, its not clear that the goods “Industrial robots for use in the handling of workpieces” falls under the goods in the foreign registration such as “Industrial robots for supports and assisting”, therefore, the wording needs to be clarified to be within the scope of the foreign registration.

 

Class 09

 

In this class, the U.S. application identifies the particular goods as follows:  “Position sensors; Electronic machines, namely, electronic sensors for measuring pressure, position, heat, not including Geiger counters, cyclotrons not for medical purposes, industrial X-ray machines and apparatus not for medical use, industrial betatrons not for medical use, magnetic object detectors, seismic exploration machines and apparatus, hydrophone machines and apparatus, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, and electron microscopes; Robots for personal use; Robots for hobby use; Robot for non-medical nursing care.”

 

However, the foreign registration identifies the following goods: “Optical machines and apparatus, optical profilers, optical sensors, pressure sensors, angle sensors, thermal sensors for human detection, displacement sensors, motion sensors, heat detectors, proximity sensors, liquid level sensors, motion sensitive sensors for pressure measuring sheets, alarm sensors, motion sensors for security purposes” and “Piezoelectric switches, potential sensors, current sensors, electronic sensors; electronic machines (not including Geiger counters, high frequency apparatus for welding, cyclotrons (not for medical purposes), industrial X-ray machines and apparatus (not for medical use), industrial betatrons (not for medical use), magnetic prospecting machines, magnetic object detectors, seismic exploration machines and apparatus, hydrophone machines and apparatus, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, electronic door closing control systems and electron microscopes), conductive tape, robots for guarded and surveillance other than for industrials medical and playing, robots for entertainment other than industrials, medical and playing.

 

These goods in the U.S. application exceed the scope of goods in the foreign registration because none of the “sensors” listed in the application are for sensing the “position” of something.  Further, the electronic machines in the foreign application are also limited to exclude “high frequency apparatus for welding, industrial X-ray machines and apparatus (not for medical use), magnetic prospecting machines, and electronic door closing control system, and this limiting language is not included in the U.S. application.  Moreover, the robots are limited in the foreign application to uses that are not “for industrials medical and playing”, which is not included in the U.S. application.  In addition, applicant must clarify how the “personal use” and “hobby use” are for entertainment purposes while not being for “playing” to be within the scope of the foreign registration.  Finally, “nursing” is not a robot function that is contemplated by any of the robot goods in the foreign application and is therefore out of the scope of the foreign registration.

 

Ultimately, the identification of goods includes wording that is outside the scope of the foreign registrations.  Therefore, applicant may respond by satisfying one of the following:

 

(1)       Amending the identification of goods in the U.S. application to correspond to the goods identified in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application (see suggestions below); or

 

(2)       Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant may adopt the following identification, if accurate:

 

Class 07 – “Industrial robots other than for manufacturing semiconductors; Robotic arms for industrial purposes other than for manufacturing semiconductors; Springs being parts of machines; Ball-bearings for machines, namely, robots, shaft couplings as parts of machines, shaft bearings being parts of machines, Bearing inserts for machines; Plastic processing machines and apparatus; Machines and apparatus for manufacturing rubber goods; Industrial robots for use in assisting with the handling and supporting of workpieces other than for manufacturing semiconductors; Industrial Service Robot other than for manufacturing semiconductors; Industrial robot for collaborative purposes other than for manufacturing semiconductors; Industrial robots for disaster response other than for manufacturing semiconductors.”

 

Class 09 – “Optical apparatus and instruments for sensors, namely, optical lenses, optical reflectors, optical apparatus and instruments for industrial robots, namely, optical inspection apparatus, cameras, laser scanners; Optical profilers for sensors, Optical profilers for industrial robots; Optical sensors, infrared sensors, namely, electronic sensors for detecting motion; Pressure sensors; Angle sensors, namely, a device to measure angles using industrial field; Thermal sensors for human detection, namely, heat sensors for detecting the presence of humans; Optical sensors for detecting the position of objects; Motion sensors, heat detectors, proximity sensors; Liquid level sensors; Motion detectors, namely, motion sensitive sensors for pressure measuring sheets; Alarm sensors, motion sensors for security purpose; Piezoelectric switches; Static electricity sensors; Electric current sensors; Ammeters; Electronic machines, namely, electronic sensors for measuring pressure, position, heat, not including Geiger counters, cyclotrons not for medical purposes, industrial X-ray machines and apparatus not for medical use, industrial betatrons not for medical use, magnetic object detectors, seismic exploration machines and apparatus, hydrophone machines and apparatus, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, and electron microscopes; Conductive tape for electrical purposes; all of the foregoing for use in connection with industrial robots, assisting robots for agricultural purposes, robots for non-medical nursing care, robots for assisting physically disabled individuals and the elderly, robots for security and premises guarding and theft prevention purposes, robots for entertainment purposes, robots for disaster-relief purpose, robots for operating metalworking machines purpose, humanoid robots with artificial intelligence, robots with artificial intelligence, robots for assisting mining, robots for assisting construction, robots for assisting loading-unloading for burden, robots for assisting lumbering, robot for assisting industrial fishing, robots for painting, robots for assisting woodworking, robots for teaching, robots enhancing physical abilities extend to lift, move and hold assisting human activities for industrial purpose, agricultural purposes, industrial fishing purposes, forestry purposes, medical purposes, nursing care purposes, security purposes, surgical purpose, security surveillance purpose, vacuum cleaners use, disaster relief purposes, entertainment purposes, hobby purposes, education and laboratory purposes, robotic exoskeleton apparatus worn by humans for the purpose of enhancing the strength and endurance of the person wearing the apparatus, robots for assisting forestry purposes, robots for medical purposes, robots for nursing care purposes, robots for security purposes, robots for surgical purpose, robots for security surveillance purpose, robots for vacuum cleaners use, robots for hobby purposes, robots for education and laboratory purposes; Robots for guarding purpose, namely, theft prevention purposes, security surveillance purposes and security guarding for facilities, and not for industrial, medical purposes or for use as a toy; Robots for personal entertainment use and not for industrial, medical purposes or for use as a toy; Robots for hobby use and not for industrial, medical purposes or for use as a toy.”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

APPLICANT MUST IDENTIFY WHICH REGISTRATION CORRESPONDS TO WHICH GOODS

 

Applicant has stated in the response that the application is based on more than one foreign registration.  A U.S. application may be based on more than one foreign registration.  The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and must specify which goods are covered by which foreign registration. TMEP §1004.02.

 

Here, applicant has provided the information for both foreign registration but has not specified which goods are covered by which foreign registration.  Therefore, applicant must clarify which goods are supported by which foreign registration.

 

RESPONSE TO THIS OFFICE 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 $125 per 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.  

 

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. 

 

 

/Emma Sirignano/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7031

emma.sirignano@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 5/10/2018 FOR U.S. APPLICATION SERIAL NO. 87091227

 

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 5/10/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.