Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 14, 2020

 

 

This application was approved for publication on May 8, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES APPLICANT MUST ADDRESS

 

• Identification of services
• Multiple class requirements

 

IDENTIFICATION OF SERVICES

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The identification of services is indefinite and must be clarified because it does not clearly identify all of the services, as outlined below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In Class 37, the wording “construction of machines, equipment and components, namely packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products” is indefinite and misclassified in Class 37. Specifically, construction of goods, such as the machines, equipment and components thereof identified in the application is a Class 40 manufacturing service and not a Class 37 service. (Construction of buildings and building structures is a Class 37 service.) For example, the following wording from the U.S. Acceptable Identification of Goods and Services Manual is all classified in Class 40:

 

• Custom construction of {indicate goods being manufactured for others}[construction of buildings and other structures is in 37]   
• Manufacturing services for others in the field of {indicate goods being manufactured}
• Manufacture of {indicate items, e.g., furniture, plastic parts, etc.} to order and/or specification of others
• Custom manufacture of {indicate items, e.g., furniture, containers, drapery, etc.}

 

Further, construction of goods and manufacturing of goods services require specification that the services are “custom,” “for others,” “to the order and/or specification of others,” etc., as noted in the foregoing ID Manual entries. See also the Class 40 Nice Class Heading, which states “For the purposes of classification, the production or manufacturing of goods is considered a service only in cases where it is effected for the account of another person to their order and specification.  If the production or manufacturing is not being performed to fulfil an order for goods which meet the customer’s particular needs, requirements, or specifications, then it is generally ancillary to the maker’s primary commercial activity or goods in trade.  If the substance or object is marketed to third parties by the person who processed, transformed or produced it, then this would generally not be considered a service.” Please clarify the services accordingly and reclassify in Class 40.

 

In Class 42, the wording “optimizing of industrial procedures, namely, procedures relating to packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products” is indefinite as written, as the nature of the service referred to as “optimizing” is unclear as written. Please clarify the nature of the service referred to as “optimizing” and reclassify as applicable.

 

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).

 

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 may adopt the following identification, if accurate: 

 

International Class 35:  Advertising, marketing and sales promotion; organizational inventory management; all aforementioned services related to machines, equipment and components thereof for packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating, and related to machines, equipment and components thereof for producing medical, medico-technical, pharmaceutical and diagnostic products; trading, also via the Internet, namely, operating a marketplace where others may negotiate transactions for used, overhauled and refurbished packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; all aforementioned services not for use in measuring technology

 

International Class 37:  Installation, repair, reconstruction, overhauling, servicing and maintenance of machines, equipment and components, namely packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; all aforementioned services not for use in measuring technology

 

International Class 40:  Custom construction of machines, equipment and components to the order and specification of others, namely packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; all aforementioned services not for use in measuring technology

 

 

International Class 41:  Instruction and further training namely, the planning, arranging and conducting of seminars, workshops, educational symposiums, and educational conferences on the subject of safety, operation, repair of packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating, machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; all aforementioned services not for use in measuring technology

 

International Class 42:  IT services, in particular development, programming and implementation of software, development of computer hardware; IT services, in particular research and development and implementation of computers and computer systems, namely, monitoring of computer systems by remote access; providing technology information on packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; technical consulting on packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; technical monitoring and inspection services, namely, monitoring and inspection of packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; monitoring and (identify the “optimizing” services and reclassify if appropriate) of industrial procedures, namely, procedures relating to packaging, metering, filling, sealing, labelling, freeze-drying, sterilizing and decontaminating machines, equipment and components and machines, equipment and components for producing medical, medico-technical, pharmaceutical and diagnostic products; all aforementioned services not for use in measuring technology.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least FIVE classes; however, applicant submitted a fee(s) sufficient for only FOUR class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

The application identifies goods and/or services 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least FIVE classes; however, applicant submitted a fee(s) sufficient for only FOUR class(es).  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 37 C.F.R. §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, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please note, TEAS Plus applicants are subject to additional requirements. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

571-272-9458

eugenia.martin@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 14, 2020 for

U.S. Trademark Application Serial No. 87671325

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

571-272-9458

eugenia.martin@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 14, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”