UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 12/17/2018

 

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On December 17, 2018, the trademark examining attorney and Kevin Smith discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

Applicant has agreed to comply with the following stated requirements:

 

• Disclaim unregisterable matter; and,
• Amend the identification of goods.

 

Pending response to this priority action, registration is refused for the following reason(s).  See TMEP §708.04.

 

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.

 

SUMMARY OF ISSUES:

 

1. Disclaimer Required
2. Requirement to Amend the Identification of Goods

 

I.                DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “ASSIST” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from Oxford Dictionaries shows this wording means, “help.”  Because the applicant’s goods will help the user, “ASSIST” merely describes a feature of the applicant’s goods.  Thus, this wording must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ASSIST” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

II.             REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS

 

General Information

 

A.    Parentheses

 

The identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

B.    Punctuation

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Class 9

 

The wording “measuring and testing machines and instruments for conductivity meters and digitizers, meters for determining velocity and distance” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for use with automobile autonomous driving and automobile safety systems” in the identification of goods is indefinite and must be clarified because the function of the “software” is not given. 

 

The wording “electrical communication machines and instruments, namely, control panels and manual control units” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear and the object being controlled by the “control units” is not given. 

 

The wording “sensing distance to an object laser apparatus” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  However, any suggestion would be duplicative.  Therefore, this wording should be struck from the identification of goods.

 

 The wording “LIDAR (light detection and ranging/ laser imaging detection and ranging)” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. 

 

The wording “machine elements for land vehicles, namely, couplings for land vehicles” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. 

 

 

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

 

            Class 9: Photographic cameras; optical machines and apparatus, namely, optical sensors, optical scanners; measuring and testing machines and instruments for testing conductivity meters and digitizers; meters for determining velocity and distance; electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for controlling automobile autonomous driving and automobile safety systems; electrical communication machines and instruments, namely, electric control panels and manual control units for regulating start-up electrical motors; high-frequency apparatus, namely, high-frequency switches, high-frequency switching power supplies; navigation apparatus for vehicles; electric installations for the remote control of industrial operations; checking apparatus for vehicles, namely, add-on devices for vehicles in order to limit the maximum speed output of an automobile; add-on devices for vehicles in order to monitor the speed output of an automobile; tachometers; thermostats for vehicles; transmitters of electronic signals; computer application software for mobile phones, namely, software for remote monitoring and control of motor vehicles; computer programs and software for control of motor vehicles; personal security alarms and personal mobility alarms, namely, alarms to monitor user's lack of movement; motion detector; motion sensors; electric sensors and electronic proximity sensors and switches in the nature of human body detecting sensors; radar apparatus; back-up cameras and dash board cameras with monitors; display device being computer monitors for vehicles; electronic control devices for automobiles in the nature of electronic controls for vehicle acceleration and brake force; vehicle-mounted laser radar apparatus; anti-theft-warning apparatus for vehicles; computer; lasers for non-medical use; sensing distance to an object laser apparatus; laser measuring apparatus; laser object detectors for use on vehicles; lasers for measuring purposes; LIDAR apparatus (light detection and ranging/ laser imaging detection and ranging); electronic brake control devices for land vehicles; acceleration sensors; machine elements for land vehicles, namely, electric couplings for land vehicles

 

Class 12

 

The wording “mechanical elements for land vehicles, namely, shock absorbers, suspension springs, power transmissions and gearings, brakes” in the identification of goods is indefinite and must be clarified because the common commercial name of gearings is not given.  However, any suggestion would be duplicative.  Therefore, this wording should be struck from the identification of goods.  

 

The wording “machine elements for land vehicles, namely, shafts, axles and spindles” in the identification of goods is indefinite and must be clarified because the nature of the “shafts” is not clear.  

 

The wording “machine elements for land vehicles, namely, bearings” in the identification of goods is indefinite and must be clarified because the nature of the “bearings” is not clear.  

 

The wording “automobiles and their parts and fittings” in the identification of goods is indefinite and must be clarified because the nature of the “parts and fittings” is not clear.  

 

The wording “electric cars and their parts and fittings” in the identification of goods is indefinite and must be clarified because the nature of the “parts and fittings” is not clear.  

 

 

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

 

            Class 12: Internal combustion engines, namely, gasoline engines for land vehicles, diesel engines for land vehicles; engines for land vehicles; mechanical elements for land vehicles, namely, shock absorbers, suspension springs, power transmissions and gearings, brakes; machine elements for land vehicles, namely, drive shafts, axles and spindles; machine elements for land vehicles, namely, wheel bearings; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; shock absorbers for automobiles; shock absorbing springs for vehicle; vehicle suspension springs; land vehicle suspension parts, namely, leaf springs; land vehicle suspension parts, namely, coil springs; air springs for vehicle suspension components for cushioning driver's seats and cabs; brakes for vehicles; ac motors for land vehicles; dc motors for land vehicles; automobiles and their structural parts and fittings; hybrid cars; plug-in hybrid cars; electric cars and their structural parts and fittings; plug-in electric cars; driverless cars; motor vehicle alarm systems; driver assistance systems consisting primarily of cruise control, emergency braking, lane departure warning and lane keep assist, integrated windshield display, blind spot detection, back-up cameras, radar and rear cross-traffic alerts for motor vehicles and structural parts thereof, sold as integral components of automobiles

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

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 12/17/2018 FOR U.S. APPLICATION SERIAL NO. 88095599

 

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 12/17/2018 (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.