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: 12/20/2018

 

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 OFFICE’S DATABASE OF 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).

 

SUMMARY OF ISSUES:

 

1. Requirement to Amend the Identification of Goods & Services—Limited to Classes 9 & 12
2. Partial Abandonment—Advisory

 

I.      REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS & SERVICES—LIMITED TO CLASSES 9 & 12

 

Class 9

 

The wording “energy storage and electric charging systems and infrastructure, namely, charging and energy storage appliances and software control systems for rechargeable equipment” in the identification of goods is indefinite and must be clarified because the nature of the goods and function of the software is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “charging and energy storage appliances for rechargeable equipment for heavy duty electric vehicles” in the identification of goods is indefinite and must be clarified because the common commercial name of the energy storage appliances is not given. 

 

The wording “charging system for multiple vehicles and fleets of vehicles, comprised of energy storage and charging stations, electronic control devices, charging and energy storage appliances, software for controlling electric engines, electronic systems, fuel systems of heavy duty vehicles, and for inputting and management of tariff data and schedules, and electronic controls for electronic engines and fuel systems of heavy duty vehicles” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. 

 

The wording “electric equipment for motor vehicles, namely, power electronics and controls, high voltage and low voltage power systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. 

 

The wording “electrical and signal integration of components of high voltage and low voltage systems for heavy duty vehicles” in the identification of goods is indefinite and must be clarified because the common commercial name of the goods is not given. 

 

The wording “and other equipment and systems for land vehicles” in the identification of goods is indefinite and must be clarified because the common commercial name of the goods is not given and the wording includes goods in multiple classes. 

 

 

Applicant may substitute the following wording, if accurate (suggestions are bold): 

 

            Class 9: energy storage systems comprised of batteries, battery modules, and battery packs for heavy duty vehicles; battery management systems for vehicles comprising battery cells, battery modules, battery packs, and battery thermal management systems; energy storage and electric charging systems and infrastructure, namely, charging appliances for rechargeable equipment and energy storage appliances in the form of batteries and software for controlling rechargeable equipment; electric control devices for energy management and energy storage; charging appliances and energy storage appliances in the form of batteries for rechargeable equipment for heavy duty electric vehicles; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage batteries and charging stations for electric vehicles, electronic control devices, charging and energy storage appliances, and software for controlling electric engines, electronic systems, fuel systems of heavy duty vehicles, and for inputting and management of tariff data and schedules, and electronic controls for electronic engines and fuel systems of heavy duty vehicles; electric equipment for motor vehicles, namely, power supplies and controllers, high voltage and low voltage power  regulator systems, battery packs, battery terminal connector clamps, battery modules, battery monitors, battery balancers, battery thermal management systems comprised of thermometers; electrical and signal integration of components of high voltage and low voltage systems for heavy duty vehicles, namely, electronic circuits; software for controlling electric engines, electronic systems, fuel systems for heavy duty vehicles; motor vehicle parts, namely, power electronics and controls for electric motors, and ancillary systems including power steering, air compressor and pneumatic systems, brakes and braking systems, HVAC systems, energy storage systems, and electrical and signal integration of components for heavy duty electric vehicles; and other equipment and systems for land vehicles

 

Class 12

 

The wording “power train mechanism comprised of clutch, transmission, drive shaft, and differential” in the identification of goods is indefinite and must be clarified because the nature of the power train goods is not clear. 

 

The wording “battery system mounting mechanisms in heavy duty vehicles” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. 

 

The wording “and other equipment and systems for land vehicles” in the identification of goods is indefinite and must be clarified because the common commercial name of the goods is not given and the wording includes goods in multiple classes. 

 

 

Applicant may substitute the following wording, if accurate (suggestions are bold): 

 

            Class 12: buses and land vehicles; engines for buses and land vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; battery system mounting mechanisms adapted for use in heavy duty vehicles; and other equipment and systems for land vehicles

 

Class 42

 

Class 42 is sufficient as written.

 

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.

 

II.             PARTIAL ABANDONMENT—ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 9 and 12 will be deleted from the application: 

 

            Class 9: energy storage and electric charging systems and infrastructure, namely, charging and energy storage appliances and software control systems for rechargeable equipment; charging and energy storage appliances for rechargeable equipment for heavy duty electric vehicles; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage and charging stations, electronic control devices, charging and energy storage appliances, software for controlling electric engines, electronic systems, fuel systems of heavy duty vehicles, and for inputting and management of tariff data and schedules, and electronic controls for electronic engines and fuel systems of heavy duty vehicles; electric equipment for motor vehicles, namely, power electronics and controls, high voltage and low voltage power systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems; electrical and signal integration of components of high voltage and low voltage systems for heavy duty vehicles; and other equipment and systems for land vehicles

 

            Class 12: power train mechanism comprised of clutch, transmission, drive shaft, and differential; battery system mounting mechanisms in heavy duty vehicles; and other equipment and systems for land vehicles

 

The application will then proceed with the following goods and/or services in International Classes 9, 12, and 42 only: 

 

            Class 9: energy storage systems comprised of batteries, battery modules, and battery packs for heavy duty vehicles; battery management systems for vehicles comprising battery cells, battery modules, battery packs, and battery thermal management systems; electric control devices for energy management and energy storage; software for controlling electric engines, electronic systems, fuel systems for heavy duty vehicles; motor vehicle parts, namely, power electronics and controls for electric motors, and ancillary systems including power steering, air compressor and pneumatic systems, brakes and braking systems, HVAC systems, energy storage systems, and electrical and signal integration of components for heavy duty electric vehicles

 

            Class 12: buses and land vehicles; engines for buses and land vehicles

 

            Class 42: design consulting services in the fields of motor vehicles, battery-electric systems and fuel efficiency, and autonomous vehicle systems; design consulting services in the fields of electric charging systems and infrastructure for rechargeable vehicles, vehicle fleets, fleet management, energy storage appliances, and control systems for rechargeable equipment; design consulting services in the fields of batteries, battery thermal management, battery monitoring systems; engineering services for others

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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.  

 

 

 

/Ryan Cianci/

Ryan Cianci

Trademark Examining Attorney

Law Office 116

571-270-3721

ryan.cianci@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 12/20/2018 FOR U.S. APPLICATION SERIAL NO. 88093247

 

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 12/20/2018 (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.