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: 6/4/2017

 

 

 

 

 

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 $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.  

 

 

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

 

SEARCH OF THE REGISTERED AND PENDING MARKS

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).

 

FAILURE TO RESPOND – ABANDONMENT OF GOODS AND SERVICES

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application:

 

International Class 9

lights; lasers; x-rays; robotic machinery, in International Class 9. 

 

International Class 42

product design and development for others

 

The application will then proceed with the remaining goods and/or services only.  37 C.F.R. §2.65(a).

 

AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES

The wordings “lights,” “lasers,” and “x-rays” and “robotic machinery” in the identification of goods are indefinite and must be clarified because the applicant must specify further the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “product design and development for others” in the identification of services is indefinite and must be clarified because the applicant must indicate goods for design.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 9

Computer hardware; computer software for use in collecting, storing, viewing, sorting, manipulating, and analyzing data of the manufacturing process and the parts, components, or assemblies being manufactured; computer software for identifying, diagnosing, analyzing, improving, optimizing, predicting, and managing issues with equipment, processes, production, and products in manufacturing; computer software to monitor, control, manage, improve, and optimize equipment, processes, production, and products in manufacturing; computer software to integrate manufacturing machine operations, track issues, and generate production reports; computer software for empirical modeling and statistical analysis of data obtained from and the monitoring of process controls systems and production issues in manufacturing; computer software for identifying, diagnosing, analyzing, improving, optimizing, and managing manufacturing issues, namely, issues regarding process, workmanship, quality, and design; computer hardware, electric sensors, motion sensors, cameras, motion sensitive security lights, video recorders, microphones, radio transmitters and receivers, motion and light detectors, lasers not for medical purposes, x-rays apparatus not for medical purposes, and [robotic machinery] industrial robots, with all of the aforementioned being for use in connection with monitoring, controlling, managing, improving, and optimizing, the assembly line, test stations, and other processes in manufacturing; computer software for use in processing and managing bill of materials, supply chain, part quality, product quality, customer complaints, returns, recalls and repairs; computer software for use in processing, managing, and extracting insights from bill of materials, supply chain, part quality, product quality, customer complaints, returns, recalls and repairs; computer software for use in comparing and analyzing idealized models of hardware to actual parts, components, and products; computer software for use comparing and predicting the performance of parts, process, and products

 

International Class 42

Software as a service (SaaS) services featuring software for use in collecting, storing, viewing, sorting, manipulating, and analyzing data of the manufacturing process and the parts, components, or assemblies being manufactured and for developing insights about the manufacturing process and the parts, components, or assemblies being manufactured; software as a service (SaaS) services featuring software for identifying, diagnosing, analyzing, improving, optimizing, and managing issues with equipment, processes, production, and products in manufacturing; software as a service (SaaS) services featuring software to monitor, control, manage, improve, and optimize equipment, processes, production, and products in manufacturing; software as a service (SaaS) services featuring software to integrate manufacturing machine operations, track issues, and generate production reports; software as a service (SaaS) services featuring software for empirical modeling and statistical analysis of data obtained from and the monitoring of process controls systems and production issues in manufacturing; software as a service (SaaS) services featuring software for identifying, diagnosing, analyzing, improving, optimizing, and managing manufacturing issues, namely, issues regarding process, workmanship, quality, and design; product design and development for others of <specify goods for design>; engineering services; engineering services in the field of manufacturing and the improvement and optimization of manufacturing production and processes; software as a service (SaaS) services featuring software for use in processing and managing bill of materials, supply chain, part quality, product quality, customer complaints, returns, recalls and repairs; software as a service (SaaS) services featuring software for use in processing, managing, and extracting insights from bill of materials, supply chain, part quality, product quality, customer complaints, returns, recalls and repairs; software as a service (SaaS) services featuring software for use in comparing and analyzing idealized models of hardware to actual parts, components, and products; software as a service (SaaS) services featuring software for use comparing and predicting the performance of parts, process, and products

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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.

 

TELEPHONE/EMAIL RESPONSE SUGGESTED

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

/Sophia S. Kim/

Sophia S. Kim

Trademark Examining Attorney

Law Office 106

571-272-9178

sophia.kim@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 6/4/2017 FOR U.S. APPLICATION SERIAL NO. 87361397

 

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 6/4/2017 (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.