NOTE TO THE FILE
SERIAL NUMBER: 88091746
DATE: 12/12/2018
NAME: chiser
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
Dear Mr. Gregg,
Thank you for getting back in touch with me so quickly regarding this matter. The new identifications of the goods look fine to me. However, there is still a small issue with the identification of services, specifically the term “producing steel and concrete structures for use in construction”.
Class 37 services are for the building of buildings and structures; whereas Class 40 is for the assembly, fabrication of parts for use in construction. The term “structures” in the current ID ambiguously straddles that line where we don’t know if the machines are being used to help make the rebar cages and/or fully finished steel greenhouses (as one of those services is in Class 40 and the other is in 37).
Here are some examples from the ID manual illustrating the need to change the term “structures”
040
Custom construction of {indicate goods being manufactured for others}[construction of buildings and other structures is in 37]
040
Custom building of {indicate goods being manufactured for others e.g., table tennis tables, automobile engines, etc.} [construction of buildings and other structures is in Class 37]
040
Custom manufacture of modular components for modular buildings
Construction of modular buildings is in Class 37.
If the robots are merely working on making the goods you all are laying out in Classes 6 and 19 I would suggest we change the term “structures” to “building components.” This wording would make it more clear that no buildings are being built by the rented robots, only the parts that are going to be integrated into a finished building.
Thus the ID would look like: Class 40: Leasing industrial robots for assembly, fabrication, and manual assistance in producing steel and concrete building components for use in construction
If this small change is alright with you all then I will do an EA for all three classes and move TOGGLE on.
Thanks,
Charles H. Hiser IV
Trademarks Examining Attorney
Law Office 112
United States Patent & Trademark Office
(571) 272-7526
Notice to trademark applicants and attorneys: All relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Gregg, Brian [mailto:BGregg@mcneeslaw.com]
Sent: Tuesday, December 11, 2018 1:53 PM
To: Hiser, Charles <Charles.Hiser@USPTO.GOV>; Doctrow, Mike <MDoctrow@mcneeslaw.com>
Cc: Trademarks <T@mcneeslaw.com>
Subject: RE: US Trademark Application 88091746 (TOGGLE)
Dear Mr. Hiser,
Thank you again for reaching out by email. Here are the revised goods which we hope will be acceptable to you.
- Class 6: Steel rebars, rods and mesh used for steel structures; steel structures, namely steel rebar cages for use in construction.
- Class 19: Construction materials, namely, precast concrete highway road separators, precast concrete road barriers, precast concrete pole bases, precast concrete ground mounted solar array footers, precast concrete solar canopy footers, precast concrete manhole sections, precast concrete pipes, precast concrete bridge sections, precast concrete head walls and end walls.
- Class 37: Leasing industrial robots for assembly, fabrication, and manual assistance in producing steel and concrete structures for use in construction.
Best regards,
Brian
Brian P. Gregg
Member
McNees Wallace & Nurick LLC
100 Pine StreetHarrisburg, PA 17101
Tel: 717.237.5456 | Fax: 717.260.1769
From: Hiser, Charles <Charles.Hiser@USPTO.GOV>
Sent: Monday, December 10, 2018 6:57 PM
To: Doctrow, Mike <MDoctrow@mcneeslaw.com>; Gregg, Brian <BGregg@mcneeslaw.com>
Cc: Trademarks <T@mcneeslaw.com>
Subject: Re: US Trademark Application 88091746 (TOGGLE)
Dear Mr. Doctrow and Mr. Gregg,
I hope this email finds you both well. I have finished my examination of the TOGGLE application and the only issue(s) are that the ID needs some work and we might potentially need to add classes to the application depending on the changes made.
The current identification for this application is:
Class 6: Steel rebars, rods and mesh used for steel structures
Class 19: Construction materials, namely, precast concrete and steel structures
Class 37: Leasing industrial robots
The issues are that we need to know what kind of structures are being produced under the mark, both the concrete and steel ones. Moreover, the steel structures are going to need to be reclassified to Class 6 regardless of what they are. Further, the rental of robots is indefinite as we need to know what the robots are doing in order to classify their rental. I suggest the following:
Class 6: Steel rebars, rods and mesh used for steel structures; steel structures for {agricultural, commercial, or industrial storage} OR steel structures, namely {steel sheds, steel greenhouses, transportable steel buildings, etc.}
Class 19: Construction materials, namely, precast concrete structures, namely, please specify {e.g. transportable buildings, bird baths being structures, pre-cast wall forms, etc.}
and steel structures
Class 37: Leasing industrial repair and maintenance robots
Class 40: Leasing industrial assembly robots
I can make the necessary changes with an examiner’s amendment if that would be most convenient for you all. Please just let me know how you would like to proceed.
Thank you,
Charles H. Hiser IV
Trademarks Examining Attorney
Law Office 112
United States Patent & Trademark Office
(571) 272-7526
Notice to trademark applicants and attorneys: All relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.