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: 3/31/2019

 

 

THIS IS A FINAL ACTION.

 

 

 

This Office Action responds to the applicant’s correspondence dated February 15, 2019.

 

The applicant (1) proposed an amended identification of goods; and, (2) provided information regarding the goods.

 

The requirement for clarification of the identification of goods, and the requirement for information regarding the goods, are maintained and made final, in part, as follows.

 

IDENTIFICATION OF GOODS – Partial Requirement

 

The wording “...; Mechanical elements for use with web control systems, namely, guide roller, roller conveyors, pivots, motor-driven actuator, sensors;...,” in Class 7, and “Regulating apparatus, namely, edge position control apparatus, center position control apparatus, tension control apparatus, apparatus for cut positioning control of any sheeter and folder, face-back matching, pre-print sheeting, and overprinting, apparatus for controlling and monitoring of gluing process;...; Sensors detectors, namely, photohead,...; ...,” in Class 9, in the proposed amended identification of goods is indefinite and must be clarified because it does not identify the goods by the full common commercial name and/or the wording encompasses goods classified in more than one class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 7

Pulp making, papermaking or paper-working machines and apparatus; Printing machines for commercial or industrial use, and bookbinding machines for industrial purposes; Packaging machines and wrapping machines; Valves for machines, namely, valves being parts of machines; Injectors for painting being parts of painting machines; Industrial robots; Actuators, namely, hydraulic valve actuators, pneumatic valve actuators; Mechanical elements for use with web control systems which are (explain what a “web control system” is and/or what it is used with or for), namely, guide rollers, roller conveyors, pivots, motor-driven (specify whether “linear” or “valve”) actuators, sensors for (indicate what they sense) sold as an integral part of (specify type of machine the sensors are part of, because if they are not sold as an integral part of a Class 7 machine, then the sensors do not appear to be a Class 7 good, but rather a Class 9 good); Regulators being parts of machines; Hydraulic intensifiers being parts of machines, not for land vehicles; Mechanical winding machines; Sorting machines, namely, machines for sorting fruit, machines for sorting species and size of fish; Regulating apparatus, namely, edge position control apparatus, center position control apparatus, tension control apparatus, apparatus for cut positioning control of any sheeter and folder, face-back matching, pre-print sheeting, and overprinting, apparatus for controlling and monitoring of gluing process, all of the foregoing being machine tools or parts of machines for metal working, printing and gluing.

 

International Class 9

Regulating apparatus, namely, edge position control apparatus, center position control apparatus, tension control apparatus, apparatus for cut positioning control of any sheeter and folder, face-back matching, pre-print sheeting, and overprinting, apparatus for controlling and monitoring of gluing process, all of the foregoing being independent instruments, and not machine tools or parts of machines; Precision measuring machines and instruments, namely, instruments for measuring length, instruments for measuring thickness, resistance measuring instruments; Cinematographic machines and apparatus; Weighing apparatus and instruments; Printing quality inspection apparatus and instruments; surface defect inspection apparatus and instruments; packaging defect inspection apparatus and instruments; Amplifiers; Encoders; Pulse generators in the nature of electronic circuits; Electric switches; Electric sensors; Data processing apparatus; Automatic weighing instrument, namely, weighing machines; Electro-dynamic apparatus for the remote control of signals; Food analysis apparatus, namely, apparatus for analyzing the sugar level, ripeness and hardness of fruits; Sensors detectors, namely, photohead which are (explain what these are and/or what they sense or detect), position sensors, tension sensors, defect sensors, sensors for servo controllers, guide sensors; Electrical inductors; Electric control panel.

 

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.

 

REQUIREMENT FOR INFORMATION – Partial Requirement

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods identified as “...; Mechanical elements for use with web control systems, namely, guide roller, roller conveyors, pivots, motor-driven actuator, sensors;...,” in Class 7, and “Regulating apparatus, namely, edge position control apparatus, center position control apparatus, tension control apparatus, apparatus for cut positioning control of any sheeter and folder, face-back matching, pre-print sheeting, and overprinting, apparatus for controlling and monitoring of gluing process;...; Sensors detectors, namely, photohead,...; ...,” in Class 9, because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); 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 Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); 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).

 

GUIDELINES FOR RESPONDING TO A PARTIAL FINAL REFUSAL

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “...; Mechanical elements for use with web control systems, namely, guide roller, roller conveyors, pivots, motor-driven actuator, sensors;...,” in Class 7, and “Regulating apparatus, namely, edge position control apparatus, center position control apparatus, tension control apparatus, apparatus for cut positioning control of any sheeter and folder, face-back matching, pre-print sheeting, and overprinting, apparatus for controlling and monitoring of gluing process;...;..., photohead,...; ...,” in Class 9.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods: 

 

International Class 7

Pulp making, papermaking or paper-working machines and apparatus; Printing machines for commercial or industrial use, and bookbinding machines for industrial purposes; Packaging machines and wrapping machines; Valves for machines, namely, valves being parts of machines; Injectors for painting being parts of painting machines; Industrial robots; Actuators, namely, hydraulic valve actuators, pneumatic valve actuators; Regulators being parts of machines; Hydraulic intensifiers being parts of machines, not for land vehicles; Mechanical winding machines; Sorting machines, namely, machines for sorting fruit, machines for sorting species and size of fish.

 

International Class 9

Precision measuring machines and instruments, namely, instruments for measuring length, instruments for measuring thickness, resistance measuring instruments; Cinematographic machines and apparatus; Weighing apparatus and instruments; Printing quality inspection apparatus and instruments; surface defect inspection apparatus and instruments; packaging defect inspection apparatus and instruments; Amplifiers; Encoders; Pulse generators in the nature of electronic circuits; Electric switches; Electric sensors; Data processing apparatus; Automatic weighing instrument, namely, weighing machines; Electro-dynamic apparatus for the remote control of signals; Food analysis apparatus, namely, apparatus for analyzing the sugar level, ripeness and hardness of fruits; Sensors detectors, namely, position sensors, tension sensors, defect sensors, sensors for servo controllers, guide sensors; Electrical inductors; Electric control panel.

 

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).

 

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.  

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

571-272-9155

John.Dwyer1@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 3/31/2019 FOR U.S. APPLICATION SERIAL NO. 88072347

 

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 3/31/2019 (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.