Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88226622

DATE:                                09/30/2019

NAME:                               rnkojo

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
    X   phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

From: Nkojo, Rhoda [mailto:Rhoda.Nkojo@USPTO.GOV]
Sent: Thursday, September 26, 2019 3:53 PM
To: Paul Craane
Subject: RE: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Paul:

 

2pm Eastern/1pm Central sounds goods.

 

Best,

Rhoda

 

Rhoda Nkojo

Trademark Attorney - Law Office 117

United States Patent & Trademark Office

(PH): (571) 272-8468

Email: rhoda.nkojo@uspto.gov

 

 

Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP Sections 705.02, 709.06.

From: Paul Craane <pcraane@cookalex.com>
Sent: Thursday, September 26, 2019 3:57 PM
To: Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV>
Subject: RE: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Dear Rhoda:

 

Thanks for this additional information.  I forwarded on your comments from yesterday, and will do so with these comments as well. 

 

As to a telephone call, could we schedule 2 pm Eaxtern, 1 pm Central?

 

Thanks.

 

Paul

 

Paul C. Craane Attorney at Law PCraane@cookalex.com
	200 West Adams Street Suite 2004 Chicago, Illinois 60606 312.236.8500 (Main) 312.236.8176 (Fax) www.cookalex.com
The information contained in this message and any attachment may be proprietary, confidential, and attorney client privileged or subject to the work product doctrine and thus protected from disclosure. If the reader of this message is not the intended recipient, or an employee or agent responsible for delivering this message to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify me immediately by replying to this message and deleting it and all copies and backups thereof. Thank you. Cook Alex Ltd.

 

 

From: Nkojo, Rhoda [mailto:Rhoda.Nkojo@USPTO.GOV]
Sent: Thursday, September 26, 2019 2:54 PM
To: Paul Craane
Subject: FW: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Dear Paul:

 

My apologies for the delayed response. I remain unclear regarding the exact nature of the goods identified in the remaining entries for which I previously did not provide explanation and suggestion.  Please see below for my suggestions for all of the indefinite identification entries from your suggested amended identification:

 

International Class 7

 

• Vacuum robotics and tools, namely vacuum cups for [indicate purpose to clarify classification in Class 7, rather than Class 21, e.g., vacuum pumps, as parts of machines, etc.];

 

• Filters for pneumatic [specify type of machine of industry, e.g.,  sheaf-binding and hydraulic lifting] machines;

 

• Miniature pneumatic components, namely, pneumatic manifold control systems for controlling cylinders and valves comprised [indicate specific components listing primary components first that are classified in International Class 7, e.g., automotive intake manifolds, particulate air filters, and electric coils];

 

For goods identified as “systems”, applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

• Noise attenuation pump, actuator and valve silencers for machines;

 

The wording “attenuation pump, actuator and valve” fails to make clear the nature of these goods, rendering classification uncertain.  Please see below for my suggestions:

 

International Class 7: Noise attenuation pump, actuator and valve silencers being filter silencers for machines;

 

International Class 7: Noise attenuation pump, actuator and valve silencers for machines being exhaust silencers for engines.

 

International Class 9

 

• Connection manifolds for pumps, actuators, and valves;

 

Applicant’s website indicates that its goods are primarily pneumatic, hydraulic, electric and vacuum products. For classification in International Class 9, the goods must either be electric, for scientific or laboratory use, or the identification must explicitly indicate that the goods are parts and/or accessories for goods squarely classified in Class 9, such as, “fire pumps”; “electric actuators”; and “automatic valves”. Otherwise, these goods may be more properly classified in International Classes 6 or 7 depending upon their nature, material composition and/or purpose.  Please see below for my suggestions:

 

International Class 6: Connection metal manifolds for use with hydraulic and pneumatic systems, namely, for use in pneumatic and hydraulic pumps, actuators and valves;

 

International Class 7: Accessories for vacuum pumps, pneumatic valve actuators, and valves for pumps, namely, connection manifolds;

 

International Class 9: Accessories for fire pumps, electric actuators, and automatic valves, namely, connection manifolds.

 

RESPONSE GUIDELINES

 

As previously below, the above identification entries remain the only indefinite entries in your suggested amended identification.  I hope that my suggestions are helpful and accurate and my explanations provide further clarification.  If you would like to discuss further, we can schedule a phone call for anytime tomorrow, September 27, 2019, between the hours of 11am and 3pm.

 

Best,

Rhoda

 

 

Rhoda Nkojo

Trademark Attorney - Law Office 117

United States Patent & Trademark Office

(PH): (571) 272-8468

Email: rhoda.nkojo@uspto.gov

 

 

Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP Sections 705.02, 709.06.

From: Nkojo, Rhoda
Sent: Wednesday, September 25, 2019 4:45 PM
To: Paul Craane <pcraane@cookalex.com>
Subject: RE: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Paul:

 

I have had the opportunity to review your suggested amended identification and only a few identification entries remain in question. I have not had an opportunity to provide suggested amended language for all entries but I did want to contact you before close of business so that you were aware of the remaining issues.  I will follow this email with the remaining suggested amended entries. Please see below:

 

International Class 7

 

·         Vacuum robotics and tools, namely vacuum cups for (indicate purpose to clarify classification in Class 7, rather than Class 21, e.g., vacuum pumps, as parts of machines, etc.0;

 

·         Filters for pneumatic [specify type of machine of industry, e.g.,  sheaf-binding and hydraulic lifting] machines;

 

·         Miniature pneumatic components, namely, pneumatic manifold control systems for controlling cylinders and valves comprised [indicate specific components listing primary components first that are classified in International Class 7, e.g., automotive intake manifolds, particulate air filters, and electric coils];

 

For goods identified as “systems”, applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

·         Noise attenuation pump, actuator and valve silencers for machines;

 

International Class 9

 

·         Control valve Connection manifolds for pumps, actuators, and valves;

 

 

 

As indicated above, I will follow this message with an additional message later this evening with  suggested amended language as well as explanation regarding why the remaining two entries are indefinite.  In the meantime, please review my comments above and hopefully we can resolve these issues by close of the business week.

 

Best.

Rhoda

 

Rhoda Nkojo

Trademark Attorney - Law Office 117

United States Patent & Trademark Office

(PH): (571) 272-8468

Email: rhoda.nkojo@uspto.gov

 

 

Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP Sections 705.02, 709.06.

From: Paul Craane <pcraane@cookalex.com>
Sent: Tuesday, September 24, 2019 5:13 PM
To: Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV>
Subject: RE: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Dear Ex. Atty. Nkojo:

 

Thanks for your email.  

 

No rush on the timing of your response – I mainly wanted to make sure that our proposal had arrived safely and that you were not waiting for me to call you to let you know it had been sent.  Email can be fickle sometimes, but it certainly helps reduce the number of formal responses in a case like this.

 

I’ll keep an eye out for your email.

 

Paul

Paul C. Craane Attorney at Law PCraane@cookalex.com
	200 West Adams Street Suite 2004 Chicago, Illinois 60606 312.236.8500 (Main) 312.236.8176 (Fax) www.cookalex.com
The information contained in this message and any attachment may be proprietary, confidential, and attorney client privileged or subject to the work product doctrine and thus protected from disclosure. If the reader of this message is not the intended recipient, or an employee or agent responsible for delivering this message to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify me immediately by replying to this message and deleting it and all copies and backups thereof. Thank you. Cook Alex Ltd.

 

 

From: Nkojo, Rhoda [mailto:Rhoda.Nkojo@USPTO.GOV]
Sent: Tuesday, September 24, 2019 3:57 PM
To: Paul Craane
Subject: RE: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Dear Mr. Craane:

 

I am in receipt of your message below as well as your voicemail. Please allow me until tomorrow to respond regarding your suggested amendments. I will send you an email by close of business Wednesday.

 

Best,

Rhoda

 

 

Rhoda Nkojo

Trademark Attorney - Law Office 117

United States Patent & Trademark Office

(PH): (571) 272-8468

Email: rhoda.nkojo@uspto.gov

 

 

Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP Sections 705.02, 709.06.

From: Paul Craane <pcraane@cookalex.com>
Sent: Tuesday, September 17, 2019 1:31 PM
To: Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV>
Subject: U.S. TRADEMARK APPLICATION NOS. 88223517; 88223670; 88226622

 

Ex. Atty. Nkojo:

 

Below are the marked up copies of the listing of goods.  Changes should appear in strikeout and underline, with the terms at issue highlighted in yellow.  I have also attached a copy in Word, in case the email causes the markings to be garbled.

 

I should be around pretty much all week, so when you have an opportunity, just feel free to call.

 

Thanks.

 

Paul

 

 

Class 7

 

Valves being parts of machines; Pneumatically controlled valves, namely, pneumatic directional and flow control valves for use in automated production machinery; Hydraulically controlled valves, namely, hydraulic directional and flow control valves for use in automated production machinery; Check valves; Actuators for valves, namely, linear, hydraulic and pneumatic actuators; Rotary actuators being pneumatic and hydraulic valve actuators valve actuators; Pneumatically and hydraulically controlled devices being grippers for use in pneumatic and hydraulic devices for the purposes of picking up and placing objects, transferring material, clamping objects, and indexing objects; Vacuum robotics and tools, namely vacuum cups; Vacuum cartridges; Venturi vacuum pumps; Vacuum pumps; Pumps, namely compressed air pumps and hydraulic pumps; Filters for pneumatic and hydraulic machines; Air filters for mechanical purposes; Filters for cleaning cooling air, for machines; Lubricating equipment for use in machines; Pressure switches for monitoring, controlling and switching pneumatic or hydraulic systems; Positioners in the nature of pneumatic and hydraulic controllers devices for controlling movement of automated production machinery; Miniature pneumatic components, namely, pneumatic manifold control systems for controlling cylinders and valves; Noise attenuation pump, actuator and valve silencers for machines; Cylinders for machines; Pressure regulators being parts of machines; Air compressors; Pistons for use with cylinders for machines; Mufflers for pneumatic and hydraulic devices in the nature of hydraulic and pneumatic mufflers for use in noise suppression of machinery; Air preparation devices, namely, pneumatic air preparation units and parts thereof for use in pneumatic machinery for conditioning compressed air; Pneumatic and hydraulic tubing and tubing accessories, namely, tube cutters, tube channels and tube markers all for use in machines having pneumatic and hydraulic systems; Pressure sensors for monitoring pneumatic and hydraulic systems; Pressure and temperature sensors for managing fluid powered systems and machines involved in factory automation, namely, for monitoring hydraulic or pneumatic fluid systems involved in factory automation; Pneumatic tubing namely, tubes used in machines to convey material via compressed air or vacuum; Cartridges for machines; Hydraulic controls for machines; Replacement parts for the aforesaid

 

Class 9

 

Electronic valves for controlling gas, liquids or fluids; Solenoid valves; Control valves for regulating the flow of gases and liquids; Safety valves being parts of machines for flow shutoff in machines; Control valve Connection manifolds for pumps, actuators, and valves; Automatic inlet control valve parts, namely, mounting manifolds for control systems; Electric actuators; Electric switches; Downloadable software for machine control; Downloadable software for managing fluid powered systems and machines involved in factory automation; Electronic control apparatus and instruments for controlling pneumatic and hydraulic systems in the nature of pneumatic and hydraulic machines; Pressure and temperature sensors; Electric valve actuator parts, namely, electronic and digital positioners for machines; Flow controls for fluid handling machines and equipment in the nature of automatic liquid flow control machines; Electronic controls for motors; Pressure regulators and flow rate and pressure indicators in the nature of pressure gauges, pressure indicators and pressure measuring apparatus for the production, processing or treatment of compressed air or other compressed gasses; Flow gauges in the nature of pressure gauges; Electronic controls for motors and machines; Vacuum gauges; Filters; Air filters; Power switches; Electronically operated machine components, namely, cylinders; Temperature sensors for managing fluid powered systems and machines involved in factory automation, namely, for monitoring hydraulic or pneumatic fluid systems involved in factory automation; Replacement parts for the aforesaid

 

 

Paul C. Craane Attorney at Law PCraane@cookalex.com
	200 West Adams Street Suite 2004 Chicago, Illinois 60606 312.236.8500 (Main) 312.236.8176 (Fax) www.cookalex.com
The information contained in this message and any attachment may be proprietary, confidential, and attorney client privileged or subject to the work product doctrine and thus protected from disclosure. If the reader of this message is not the intended recipient, or an employee or agent responsible for delivering this message to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify me immediately by replying to this message and deleting it and all copies and backups thereof. Thank you. Cook Alex Ltd.