To: | Mitsui Chemicals, Inc. (TMEFS@LSLLP.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87091227 - ARCUS - 19678 |
Sent: | 5/20/2019 5:18:46 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87091227
MARK: ARCUS
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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: Mitsui Chemicals, Inc.
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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. 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: 5/20/2019
THIS IS A FINAL ACTION.
This Office action responds to applicant’s communication dated 04/29/2019 where applicant:
The examining attorney has reviewed the applicant’s response and determined the following:
The requirement for the identification of goods is now made FINAL for the reasons set forth below. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6); 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
INDEFINITE AND OUT OF SCOPE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application, as amended on 11/05/2018. 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, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
In this case, the U.S. application, as amended and in relevant part, identifies the goods as follows: “Industrial robots other than for manufacturing semiconductors; 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” and “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.”
However, a portion of the proposed amendment to the U.S. application identifies the following goods: “Industrial robots and structural parts other than for manufacturing semiconductors; Industrial robots and structural parts for use in assisting with the handling and supporting of workpieces other than for manufacturing semiconductors; Industrial Service Robots and structural parts other than for manufacturing semiconductors; Industrial robots and structural parts for collaborative purposes other than for manufacturing semiconductors; Industrial robots and structural parts for disaster response other than for manufacturing semiconductors” and “Robots and structural parts 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 and structural parts for personal entertainment use and not for industrial, medical purposes or for use as a toy; Robots and structural parts for hobby use and not for industrial, medical purposes or for use as a toy.”
This portion of the proposed amendment exceeds the scope of the current identification because the wording adds on the additional indefinite wording “and structural parts” which broadens the scope of the goods to include a wide number of parts and not just the robots themselves. Accordingly, the amendment is not acceptable and applicant must delete the wording.
Furthermore, the wording “and structural parts” is indefinite. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
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 Robots other than for manufacturing semiconductors; Industrial robots for collaborative purposes other than for manufacturing semiconductors; Industrial robots for disaster response other than for manufacturing semiconductors.”
Class 09 – “Piezoelectric switches; Conductive tape for electromagnetic radiation shielding for sensors and industrial robots; 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 purpose or for use as a toy; Robots for hobby use and not for industrial, medical purposes or for use as a toy.”
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 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 $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.
Class 07 – “Industrial robots and structural parts other than for manufacturing semiconductors; Industrial robots and structural parts for use in assisting with the handling and supporting of workpieces other than for manufacturing semiconductors; Industrial Service Robots and structural parts other than for manufacturing semiconductors; Industrial robots and structural parts for collaborative purposes other than for manufacturing semiconductors; Industrial robots and structural parts for disaster response other than for manufacturing semiconductors.”
Class 09 – “Robots and structural parts 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 and structural parts for personal entertainment use and not for industrial, medical purposes or for use as a toy; Robots and structural parts for hobby use and not for industrial, medical purposes or for use as a toy.”
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following goods:
Class 07 – “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.”
Class 09 – “Piezoelectric switches; Conductive tape for electromagnetic radiation shielding for sensors and industrial robots.”
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 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). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
/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.