To: | Bimba Manufacturing Company (docket@cookalex.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88226622 - BIMBA - 0410-0264 |
Sent: | 6/12/2019 4:53:04 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88226622
MARK: BIMBA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Bimba Manufacturing Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/12/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on April 24, 2019.
In a previous Office action dated January 23, 2019, applicant was required to satisfy the following requirement: amend the identification of goods.
In its response, applicant submitted an amended identification that contains indefinite language that must be clarified. Accordingly, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
PARTIAL REQUIREMENT – AMEND IDENTIFICATION OF SPECIFIED GOODS
In the previous Office action, applicant was required to amend all indefinite language provided in its identification of goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01. In its response, applicant submitted an amended identification that contains indefinite language. Accordingly, for the reasons set forth previously and below, the requirement to amend the identification of goods is now made FINAL with regard to specific wording in the identification of goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01.
International Class 7
For the reasons set forth below, specific wording in the identification of goods for International Class 7 is either misclassified or unacceptable as indefinite and/or too broad and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “rotary actuators being pneumatic and hydraulic valve actuators valve actuators” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, this wording is indefinite because it appears to indicate two separate goods, i.e., “rotary actuators being pneumatic and hydraulic valve actuators” and “valve actuators”, without proper punctuation to distinguish the goods. Additionally, the wording “valve actuators” is too broad because it could include electric valve actuators classified in International Class 9 and hydraulic valve actuators classified in International Class 7. Therefore, applicant must either delete the additional reference to the “valve actuators”, or incorporate the semi-colon punctuation to properly delineate the goods and language to further clarify the type of “valve actuators”.
Applicant should be aware that proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. In, general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services 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 or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
The wording “pneumatically and hydraulically controlled grippers for pneumatic and hydraulic device; positioners in the nature of pneumatic and hydraulic controllers for controlling movement of automated production machinery” is indefinite and must be clarified because the type of goods and/or their purpose remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further clarify the type of and/or their purpose.
The wording “vacuum robotics and tools” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, this wording is indefinite because it fails to indicate specific goods and the type and nature of the goods remains unclear. Additionally, this wording is too broad because it could encompass robotic vacuum cleaners classified in International Class 7 and vacuum gauges classified in International Class 9. Thus, applicant must amend the identification to specify the type, nature and/or specific items using common commercial or generic terms to describe the goods.
The wording “vacuum cartridges” is indefinite and must be clarified because the type of goods and their purpose remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further clarify the type of and their purpose.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
The wording “pumps” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass bilge pumps classified in International Class 7 and fire pumps classified in International Class 9. Thus, applicant must amend the identification to clarify the type of goods.
The wording “filters for machines” is indefinite and must be clarified because it fails to specify the type of machines or the industry for the machines. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the type or industry for the machines.
The identification for “miniature pneumatic components, namely pneumatic manifold control systems” is indefinite because the wording does not make clear the nature of the specific systems. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). Applicant must clarify the goods by 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).
The wording “noise attenuation silencers for machines” is indefinite and must be clarified because the nature of the goods remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The wording “noise attenuation” and “for machines” describes the purpose for the goods but does not sufficiently describe the type of goods. Applicant must amend the identification to specify the type of goods.
The wording “pneumatic and hydraulic tubing and tubing accessories, namely … tube channels and tube markers all for use in machines having pneumatic and hydraulic systems” is indefinite because the nature of the “tube markers” and “tube channels” remains unclear and is not clarified by the stated purpose of for use in machines. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Thus, applicant must amend the identification to further clarify the nature of the goods.
The wording “cartridges for machines” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, this wording is indefinite because it fails to sufficiently indicate type of goods and their purpose. Additionally, this wording is too broad because it could encompass paint supply cartridges for painting machines classified in International Class 7 and unfilled ink cartridges for photocopy machines classified in International Class 9. Thus, applicant must amend the identification to specify the type, nature purpose for the goods.
Applicant has classified “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” in International Class 7; however, the proper classification is International Class 9. Therefore, applicant may respond by (1) reclassifying these goods and/or services in the proper international class, (2) deleting this wording from the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
International Class 9
For the reasons set forth below, specific wording in the identification for International Class 9 is unacceptable as indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “safety valves for flow shutoff in machines” is indefinite and must be clarified because the nature of the goods remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In order to allow proper classification in International Class 7, the safety valve goods must be identified as “being parts of machines”. Thus, applicant must amend the identification to specify that the goods are machine parts.
The wording “control valve connection manifolds” is indefinite and must be clarified because the nature of the goods remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the wording appears to reference two distinct goods, i.e., “control valves” and “connection manifolds” and these goods are not sufficiently described in nature, type or purpose. Thus, applicant must amend the identification to clarify the nature, type and/or purpose for the goods and/or incorporate semi-colon punctuation to distinguish the goods.
The wording “filters; air filters” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, this wording is indefinite because it fails to sufficiently to indicate the type of goods and/or their purpose. Additionally, this wording is too broad because it could encompass fuel filters and air filters for gear drives classified in International Class 7 and filters for optical devices and air filters for computers classified in International Class 9. Thus, applicant must amend the identification to specify the type of goods and their purpose.
The wording “electronically operated cylinders” is indefinite and must be clarified because the nature of the goods remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Thus, applicant must amend the identification to further clarify the nature of the goods.
Applicant may adopt the following wording, specified in bold, if accurate:
International 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; [indicate type of goods classified in International Class 7, e.g., hydraulic] valve actuators; Pneumatically and hydraulically controlled [clarify type of goods, e.g., devices] being grippers for use in pneumatic and hydraulic devices for [clarify purpose of goods, e.g., picking up and placing objects on automated systems]; Vacuum robotics and tools, namely, [indicate specific items classified in International Class 7 and using common commercial or generic terms, e.g., robotic vacuum cleaners, shaft bearings and drives for vacuum pumps]; [clarify type of goods, e.g., vacuum pump parts, namely, vacuum cartridges used to limit clogging of debris in vacuum pumps]; vacuum pumps; [clarify type of goods classified in International Class 7, e.g., bilge] pumps; Filters for [specify type of machine or industry, e.g., automotive] 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 controller devices for controlling movement of automated production machinery; Miniature pneumatic components, namely pneumatic manifold control systems comprising [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]; Noise attenuation [clarify type of goods, e.g., filter] 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 being hydraulic and pneumatic tube conveyors for use in machines having pneumatic and hydraulic systems; Pressure sensors for monitoring pneumatic and 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; [clarify type of goods and their purpose classified in International Class 7, e.g., paint supply cartridges sold empty for use with industrial painting] machines; Hydraulic controls for machines; [specify type of goods classified in International Class 7, e.g., fuel] filters; air filters for [specify purpose for goods classified in International Class 7, e.g., gear drives]; Replacement parts for the aforesaid;
International 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; [clarify type of goods and their purpose classified in International Class 9, e.g., automatic inlet control valve for reciprocating air compressors]; [clarify type of goods and their purpose classified in International Class 9, e.g., connection vacuum manifolds for laboratory use]; 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 for [specify purpose for goods classified in International Class 9, e.g., optical devices]; air filters for [specify purpose for goods classified in International Class 9, e.g., computers]; Power switches; Electronically operated cylinder [clarify the nature of the goods classified, e.g., locks]; [indicate type of goods classified in International Class 9, e.g., electric valve actuators]; Vacuum robotics and tools, namely, [indicate specific items classified in International Class 9 and using common commercial or generic terms, e.g., vacuum gauges]; [clarify type of goods classified in International Class 9, e.g., fire] pumps; [clarify type of goods and their purpose classified in International Class 9, e.g., unfilled ink cartridges for photocopy] machines; [the following goods are properly classified in International Class 9: 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.
Scope Advisory
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.
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.
PROPER RESPONSE TO FINAL ACTION FOR PARTIAL REQUIREMENT
International Class 7: “valve actuators; pneumatically and hydraulically controlled grippers for pneumatic and hydraulic devices; vacuum robotics and tools; vacuum cartridges; Venturi vacuum pumps; pumps; filters for machines; positioners in the nature of pneumatic and hydraulic controllers for controlling movement of automated production machinery; miniature pneumatic components, namely pneumatic manifold control systems; noise attenuation silencers for machines; pneumatic and hydraulic tubing and tubing accessories, namely, tube channels and tube markers all for use in machines having pneumatic and hydraulic systems; 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; cartridges for machines” and
International Class 9: “safety valves for flow shutoff in machines; control valve connection manifolds; filters; air filters; electronically operated cylinders” in International Class 9. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following goods
International 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; vacuum pumps; 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; 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 for use in machines having pneumatic and hydraulic systems; Pressure sensors for monitoring pneumatic and 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; Hydraulic controls for machines; Replacement parts for the aforesaid;
International Class 9: Electronic valves for controlling gas, liquids or fluids; Solenoid valves; Control valves for regulating the flow of gases and liquids; 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; Power switches; Replacement parts for the aforesaid.
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
/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.