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: 11/28/2018

 

 

 

This Office action responds to applicant’s communication dated 11/05/2018 where applicant:

 

1. Submitted arguments against the Section 2(d) Refusal;
2. Amended the identification of goods;
3. Provided guidance regarding the Foreign Registration basis for the goods.

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

1. The arguments against the Section 2(d) Refusal are not persuasive, therefore, the refusal is continued and maintained;
2. The amendment to the identification of goods is not acceptable, however, the class clarification issue has been satisfied. Further, additional requirements for the identification of goods that were not clearly expressed in the previous Office action have been identified.  Therefore, a new requirement is now issued.
3. The guidance regarding the Foreign Registration basis for the goods is acceptable, therefore, the requirement is satisfied.

 

SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE: Duplicative And Out Of Scope Identification Of Goods – Amendment Required

 

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).

 

DUPLICATIVE AND OUT OF SCOPE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

 

Class 07 is acceptable as written.

 

Class 09

 

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.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only goods 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). 

 

In this case, the U.S. application identifies the particular goods as follows:  “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” and “high frequency apparatus for welding” and “electronic door closing systems.”

 

However, the foreign registration identifies the following goods:  “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).”

 

These goods in the U.S. application exceed the scope of goods in the foreign registration because “high frequency apparatus for welding” and “electronic door closing systems” are listed as goods that are excluded from the identification of goods in the foreign registration.  Furthermore, the wording in the application does not include all the exclusionary wording in the foreign registration.  Thus, applicant must remove any excluded goods and amend the identification to insure all the exclusionary wording is included in the identification of goods.

 

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 in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or

 

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

 

Furthermore, applicant has added the wording “conductive tape for sensors, conductive tape for industrial robots” to the identification.  This wording was previously refused in the 8/16/2016 Office action on the basis that the wording is indefinite and must be clarified because it does not sufficiently explain the nature of the goods being identified.  Applicant must clarify the purpose of tape being identified, such as for electromagnetic shielding in electronic products, to allow the Office to adequately compare the goods for likelihood of confusion purposes. 

 

In response, applicant deleted the wording and replaced it with the phrase “Conductive tape for electrical purposes”, however, this wording should have been identified as indefinite, as is still does not identify a known product such as conductive tape for electromagnetic radiation shielding in electronic products.  Furthermore, the wording is out of scope of the identification of goods as it does not contain the limiting language “for sensors” and for “industrial robots” in the original application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the U.S. application remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).  Therefore, must amend the identifications “conductive tape for sensors, conductive tape for industrial robots” and “Conductive tape for electrical purposes” to identify a known product and to stay within the scope of the identification of goods in the original application.

 

Finally, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 09 for “Piezoelectric switches.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

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 the following: 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 for electromagnetic radiation shielding for sensors and industrial robots; 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 purpose, security surveillance purpose 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.

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  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 11/28/2018 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 11/28/2018 (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.