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.

 

ISSUE/MAILING DATE: 1/5/2017

 

 

 

 

 

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 or e-mail without incurring this additional fee.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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).  However, the applicant must address the following requirements.

 

Summary of Issues Applicant Must Address

• Requirement for Acceptable Identification of Goods
• Requirement for Additional Information

 

Identification and Classification of Goods – As to Specified Goods in Classes 7 and 11

 

Applicant’s goods in Classes 7 and 11 are identified as:

 

Agricultural and horticultural machines with functions of controlling artificial light sources, air conditionings and fertilization; Agricultural and horticultural machines with functions of controlling water supply, fertilization and agrochemicals treatment; Cultivating machines and implements; Cultivating machines and implements, other than hand-operated implements; Agricultural and horticultural seed planting machine; Seedling rearing machines with functions of controlling artificial light sources, air conditionings and fertilization; Seedling rearing machines with functions of controlling water supply, fertilization and agrochemicals treatment; Agricultural and horticultural machinery and attachments, namely, fertilizer spreaders; Fertilizer distributing machines, other than hand-operated implements; Cultivating machines with functions of controlling artificial light sources, air conditionings and fertilization; Cultivating machines with functions of controlling water supply, fertilization and agrochemicals treatment, in Class 7.

 

Drying apparatus for agricultural processing; Air-conditioning apparatus; Water purification machines; Waste water purification apparatus, installations and tanks; Level controlling valves for tanks; Plumbing fittings, namely, cocks; Watering machines for agricultural and horticulture purposes; Agricultural and horticulture irrigation units; Water distillation units for agriculture and horticulture purposes; Irrigation sprinklers for agriculture and horticulture purposes; Regulating accessories for water supply, namely, metered valves; Harvest drying machines; Forage drying apparatus, in Class 11.

 

The applicant’s goods in Class 1 are definite and properly classified.  This requirement is limited to the wording highlighted above in bold.

 

Class 7

 

The wording “Agricultural and horticultural machines with functions of controlling artificial light sources, air conditionings and fertilization; Agricultural and horticultural machines with functions of controlling water supply, fertilization and agrochemicals treatment” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  If these are machines that also incorporate the specified control functions, the goods are properly classified, but the applicant must specify the particular machines by common commercial name, such as harvesters.  However, if these goods consist solely of controllers for the specified purposes, this must be specified and the goods reclassified in Class 9.

 

Similar to the above, the wording “Seedling rearing machines with functions of controlling artificial light sources, air conditionings and fertilization; Seedling rearing machines with functions of controlling water supply, fertilization and agrochemicals treatment” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The applicant must either specify the seedling rearing machines by common commercial name, such as seed planting machines, and clarify that these machines also include the specified control systems, or amend and reclassify the control systems in Class 9.

 

Similar to the above, the wording “Cultivating machines with functions of controlling artificial light sources, air conditionings and fertilization; Cultivating machines with functions of controlling water supply, fertilization and agrochemicals treatment” in the identification of goods must be clarified to specify that these machines also incorporate the specified control systems.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “cultivating implements” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass power-operated tools in Class 7 and hand-operated tools in Class 8.

 

Class 11

 

The wording “Level controlling valves for tanks” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording appears to describe automatic valves.  If so, this should be specified and the goods reclassified in Class 9.  If these are manual valves, this must be specified along with the material composition:  metal, manually operated valves are classified in Class 6; rubber, manually operated valves are classified in Class 17, and plastic, manually operated valves are classified in Class 20.

 

Applicant has classified “Harvest drying machines” in International Class 11; however, the proper classification for these goods is International Class 7.  Therefore, applicant may respond by (1) reclassifying these goods in the proper international class, or (2) deleting “Harvest drying machines” from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

 

Metal, manually operated level controlling valves for tanks, in Class 6.

 

Agricultural and horticultural machines, namely, _________ {specify machines in this class, such as harvesters} that also include control systems for artificial light sources, air conditionings and fertilization; Agricultural and horticultural machines, namely, _________ { specify machines in this class, such as harvesters} that also include control systems for water supply, fertilization and agrochemicals treatment; Cultivating machines and power-operated implements, namely, cultivators; Cultivating machines and implements, other than hand-operated implements; Agricultural and horticultural seed planting machine; Seedling rearing machines, namely, ______ {specify machines in this class, such as agricultural seed planting machines} that also include control systems for artificial light sources, air conditionings and fertilization; Seedling rearing machines namely, ______ {specify machines in this class, such as agricultural seed planting machines} that also include control systems for water supply, fertilization and agrochemicals treatment; Agricultural and horticultural machinery and attachments, namely, fertilizer spreaders; Fertilizer distributing machines, other than hand-operated implements; Cultivating machines that also include control systems for artificial light sources, air conditionings and fertilization; Cultivating machines that also include control systems for water supply, fertilization and agrochemicals treatment; Harvest drying machines, in Class 7.

 

Hand-operated agricultural implements, namely, cultivators, in Class 8.

 

Control systems for artificial light sources, air conditionings and fertilization for agricultural and horticultural purposes, including seedling rearing; control systems for water supply, fertilization and agrochemicals treatment for agricultural and horticultural purposes, including seedling rearing; automatic level controlling valves for tanks, in Class 9.

 

Drying apparatus for agricultural processing; Air-conditioning apparatus; Water purification machines; Waste water purification apparatus, installations and tanks; Plumbing fittings, namely, cocks; Watering machines for agricultural and horticulture purposes; Agricultural and horticulture irrigation units; Water distillation units for agriculture and horticulture purposes; Irrigation sprinklers for agriculture and horticulture purposes; Regulating accessories for water supply, namely, metered valves; Forage drying apparatus, in Class 11.

 

Rubber, manually operated level controlling valves for tanks, in Class 17.

 

Plastic, manually operated level controlling valves for tanks, in Class 20.

 

See TMEP §1402.01.

 

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’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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Multiple-Class Application Requirements

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fees 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 classified in at least eight classes; however, applicant submitted fees sufficient for only three classes.  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.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.

 

Information Requirement – As to Specified Goods in Class 7

 

This requirement is limited to the following goods:

 

Agricultural and horticultural machines with functions of controlling artificial light sources, air conditionings and fertilization; Agricultural and horticultural machines with functions of controlling water supply, fertilization and agrochemicals treatment; Seedling rearing machines with functions of controlling artificial light sources, air conditionings and fertilization; Seedling rearing machines with functions of controlling water supply, fertilization and agrochemicals treatment; Cultivating machines with functions of controlling artificial light sources, air conditionings and fertilization; Cultivating machines with functions of controlling water supply, fertilization and agrochemicals treatment, in Class 7.

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651 (citing In re Cheezwhse.com, Inc., 85 USPQ2d at 1919; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814).  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Response Guidelines

 

Because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c).  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@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 1/5/2017 FOR U.S. APPLICATION SERIAL NO. 87189707

 

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 1/5/2017 (or sooner if specified in the Office action).  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 Trademark Electronic Application System (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.