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: 1/23/2019

 

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:

• Requirement – Amend Identification of Goods

 

 

 

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

International Class 7

 

With respect to the proposed identification in International Class 7, the following wording is unacceptable as indefinite and must be clarified.

 

“Valves; control valves; pneumatically controlled valves; hydraulically controlled valve; check valves; rotary actuators; grippers for pneumatic and hydraulic devices; vacuums; pumps; filters; air filters; lubricators; switches; positioners; miniature pneumatic components, namely, manifolds; silencers; cylinders; pistons for cylinders; mufflers for pneumatic and hydraulic devices; pneumatic air preparation units and parts thereof for use in pneumatic machinery; tubing and tubing accessories, namely, cutters, channels and markers all for use in machines; cartridges for machines”.

 

These goods are unacceptable as indefinite because, based on the applicant’s description, the examining attorney cannot determine the specific kind, type, function and/or purpose for the valves, rotary actuators, grippers, vacuums, pumps, filters, switches, positioners, manifolds, cylinders, pistons, mufflers, air preparation units, tubing.  Additionally, many of these goods are too broad because they could include goods identified in International Classes 7 and 9 as shown in the suggested language below.

 

Furthermore, the wording “lubricators; silencers” is also indefinite and too broad because it fails to make clear the specific type, nature and/or purpose for the goods and could include goods in multiple International Classes.  For example, lubricators in the the nature of lubricating grease are classified in International Class 4 and lubricating machines classified in International Class 7.  Further, filter silencers for machines are classified in International Class 7, while silencers for firearms are classified in International Class 13.

 

In total, the language referenced above that applicant used fails to adequately describe these goods such that the average person would readily understand what the goods are.  Accordingly, applicant must amend the identification to clarify the type, kind, nature and/or purpose for the goods.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

International Class 9

 

With respect to the proposed identification in International Class 9, the following wording is unacceptable as indefinite and/or too broad and must be clarified.

 

“Valves; control valves; time delay control valves; safety valves; control valve connection manifolds; control valve mounting manifolds; software; software for managing fluid powered systems and machines involved in factory automation; control apparatus and instruments for pneumatic and hydraulic systems; sensors; sensors for managing fluid powered systems and machines involved in factory automation; electronic and digital positioners as part of valves and actuators; flow controls for fluid handling machines and equipment; regulators and flow rate and pressure indicators for the production, processing or treatment of compressed air or other compressed gases; flow gauges; electronic controls for motors and machines”.

These goods are unacceptable as indefinite because, based on the applicant’s description, the examining attorney cannot determine the specific kind, type, function and/or purpose for the valves, manifold mounts, software, apparatus and instruments, sensors, positioners, flow controls, regulators, indicators, gauges.  Additionally, applicant’s identified “safety valves” are too broad because they could include goods identified in International Classes 9 and 11 as shown in the suggested identification provided below.

 

As previously noted, the language referenced above that applicant used fails to adequately describe these goods such that the average person would readily understand what the goods are.  Accordingly, applicant must amend the identification to clarify the type, kind, nature and/or purpose for the goods.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action

 

Therefore, applicant may adopt the following wording, specified in bold, if accurate:

 

International Class 4: [Specify type/nature of “lubricator” goods classified in International Class 4, e.g., lubricating grease];

 

International Class 7: Valves being parts of [indicate type of machine] machines; [clarify purpose for goods classified in International Class 7, e.g., pump] control valves; pneumatically controlled valves, namely, pneumatic directional control valves for [specify purpose, e.g., use in automated production machinery]; hydraulically controlled valve, namely, hydraulic directional control valves for [specify purpose, e.g., use in automated production machinery]; check valves; actuators for valves, namely, linear, hydraulic and pneumatic actuators; rotary actuators being [specify type of goods using common commercial terms, e.g., hydraulic valve actuators]; [specify type of goods using common commercial terms, e.g., grippers in the nature of  pneumatic and hydraulic valve actuators] for pneumatic and hydraulic devices; [specify type of goods classified in International Class 7, e.g., reciprocating vacuum pumps]; vacuum pumps; pumps; filters for [specify type of machine or industry] machines; air filters for [specify purpose, e.g., mechanical purposes]; filters for cleaning cooling air, for machines; [clarify type of “lubricator” goods classified in International Class 7, e.g., lubricating machines]; [clarity type and purpose for the goods, e.g., pressure switches for monitoring, controlling and switching hydraulic or pneumatic systems]; [clarify type/nature of goods and their purpose, e.g., positioners in the nature of hydraulic control valves for controlling the movement of automated production machinery]; miniature pneumatic components, namely, [clarify type of goods, e.g., intake] manifolds; [clarify type of goods and their purpose classified in International Class 7, e.g., filter silencers for machines]; cylinders for [clarity purpose for goods classified in International Class 7, e.g., machines]; pressure regulators being parts of machines; air compressors; pistons for [clarify purpose for goods, e.g., use with cylinders for machines]; mufflers for pneumatic and hydraulic devices in the nature of [clarify nature and purpose for the goods in greater detail, e.g., hydraulic elevator mufflers for use in noise suppression of elevators]; [clarity type of goods and their purpose in greater detail, e.g., air preparation devices, namely, pneumatic air preparation units and parts thereof for use in pneumatic machinery for conditioning compressed air]; pneumatic tubing and tubing accessories, namely, tube cutters, tube channels and tube markers all for use in machines for [indicate more specified purpose]; [clarify nature of goods and their purpose classified in International Class 7, e.g., pressure sensors for monitoring hydraulic systems]; pressure 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;

 

International Class 9: [Clarify type and purpose for goods classified in International Class 9, e.g., electronic valves, for controlling gas or fluids]; solenoid valves; [clarify nature of goods classified in International Class 9, e.g., automatic inlet] control valves for [further clarity purpose for the goods classified in International Class 9, e.g., reciprocating air compressors]; [clarity nature of goods classified in International Class 9, e.g., thermostatic] time delay control valves for [further clarify purpose for the goods classified in International Class 9, e.g., machines]; control valves for regulating the flow of gases and liquids; safety valves for [specify purpose for goods classified in International Class 9, e.g., flow shutoff in well construction]; control valve connection manifolds; automatic inlet control valve parts, namely, mounting manifolds for [specify purpose]; electric actuators; electric switches; [specify the goods are downloadable and indicate function of goods, e.g., downloadable software for dosimetry purposes in the field of radiotherapy]; [specify the goods are downloadable, e.g., downloadable] software for managing fluid powered systems and machines involved in factory automation; electronic control apparatus and instruments for [further specify function/purpose, e.g., controlling] pneumatic and hydraulic systems in the nature of pneumatic and hydraulic machines]; [clarify type/nature/purpose for the goods classified in International Class 9, e.g., pressure] sensors; hydraulic directional control valves and electric valve actuators parts, namely, electronic and digital positioners for [specify purpose for the goods]; Flow controls for fluid handling machines and equipment in the nature of [clarify nature of the goods, e.g., automatic liquid flow control machines]; electronic controls for motors; pressure regulators and flow rate and pressure indicators in the nature of [clarify type/nature of the goods] for the production, processing or treatment of compressed air or other compressed gases; flow gauges in the nature of [clarify nature and/or purpose for the goods, e.g., pressure gauges]; electronic controls for motors and machines; [clarify type of goods classified in International Class 9, e.g., vacuum gauges]; [clarify type of goods classified in International Class 9, e.g., fire pumps]; [clarify type of goods classified in International Class 9, e.g., laboratory filters]; air filters for [clarify purpose for goods classified in International Class 9, e.g., automation equipment, namely, computers]; [clarify type of goods classified in International Class 9, e.g., power switches]; [clarify type of goods classified in International Class 9, e.g., electronically operated high security lock cylinders]; replacement parts for the aforesaid.

 

International Class 11: [Clarify nature/type of goods classified in International Class 11, e.g., vacuum release] safety valve for [specify purpose for goods classified in International Class 11, e.g., flow shutoff in pools and spas];

 

International Class 13: Silencers for [specify purpose for goods classified in International Class 13, e.g., firearms].

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for classes 7 and 9; and applicant needs a specimen for class(es) 4, 11 and 13. See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

 

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.  

 

ASSISTANCE

 

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 requirement 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. 

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@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 1/23/2019 FOR U.S. APPLICATION SERIAL NO. 88226622

 

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 1/23/2019 (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.