Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 7/13/2017

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s). 86598163

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

PLEASE ALSO NOTE:

1. The citation of the pending application must be continued.  In this regard, the mark in the cited application is identical to applicant’s mark.  Moreover, the cited application covers computer software for use in controlling industrial equipment.  “Industrial equipment” is broadly identified and, therefore, presumed to industrial lighting, air conditioning, and ventilation systems.

 

2. The refusal under Section 2(d) is obviated/withdrawn, except as to Registration No. 3760986.  The refusal as to Registration No. 3760986 is continued, but ONLY with respect to applicant’s “electronic lighting fixtures, namely, street lights.”  Applicant’s arguments regarding the refusal were appreciated.  However, the registered mark is identical to applicant’s mark.  Moreover, registrant’s lighting ballasts are broadly identified and, therefore, presumed to specifically include those for use with or as part of street light fixtures.  Thus, the goods appear highly related and complementary in nature.

 

3. The requirement for compliance with the multiple-classification requirements is withdrawn as it is clear the goods fall in only two classes.  However, the requirement for clarification of the identification of goods is continued.  In particular, please note the following:

 

Class 9 

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the 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 application originally included the following:  electronic controllers for monitoring and regulating the air-conditioners and lighting fixtures identified in Class 11; computer software for indicating, monitoring, and regulating the operation of air-conditioners and lighting fixtures identified in Class 11;

 

However, the proposed amendment includes the following: electronic controllers for monitoring and regulating the ventilators; computer software for indicating, monitoring, and regulating the operation of ventilators.  While ventilators are often part of an HVAC system, they are not complete “air conditioners” nor are they “lighting fixtures.”  Thus, the goods as to the “ventilators” are impermissibly beyond the scope of the original identification.  

 

As an additional matter, for grammatical purposes “the” should be deleted. 

 

Applicant may adopt the following identification for Class 9, if accurate:

 

Electronic controllers for monitoring and regulating air-conditioners and air-coolers; computer software for indicating, monitoring, and regulating the operation of air-conditioners and air-coolers, in Class 9.

 

Class 11

 

The identification of goods and/or services contains parentheses and/or brackets.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification.  Id. 

 

In this case, applicant must remove the parentheses from “air conditioners for computer (server) data center installations” in the identification and incorporate any parenthetical information into the description of the goods.

 

Applicant must clarify the nature of the “vapor chamber cooler modules” for cooling.  Similarly, the common commercial name or nature of the “thermoelectric cooler modules” must be clarified.

 

“Liquid-cooled radiators” appears to be impermissibly beyond the scope of the original identification as “radiators” are generally heating installations.  The original identification did not include heating goods.

 

Applicant may adopt the following identification for Class 11, if accurate:

 

Air-conditioners for telecom power cabinets; air conditioners for cabinet-type electric power supply installations; air conditioners for computer server data center installations; cooling appliances and installations, namely, air-coolers, cabinet-type air cooling appliances, _______________ [applicant must clarify the nature of the “vapor chamber cooler modules” such as by indicating what they cool], refrigerating cabinets, refrigerating chambers, and _______________ [applicant must clarify the nature of the “thermoelectric cooler modules”]; air conditioning installations; air purifying apparatus and machines; electric fans for air conditioning installations and apparatus; fans sold as integral component parts of air conditioners; ventilators for air conditioning installations and apparatus; electric lighting fixtures, namely, street lights; filters for air conditioning; refrigerating appliances and installations, in Class 11.

 

Please do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@uspto.gov

 

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 Trademark Electronic Application System (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 7/13/2017 FOR U.S. APPLICATION SERIAL NO.87176003

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.