Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 16, 2019

 

This Office action is in response to applicant’s communication filed on September 18, 2019.

 

The Trademark Act Section 2(d) Refusal is withdrawn. In addition, the disclaimer of the exclusive right to use “SYSTEMS” is accepted and entered into the record.

 

The requirement for an acceptable identification of goods and multiple class application requirements are made final. See 37 C.F.R. §2.63(b).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The requirement that the applicant adopt an acceptable identification and classification of goods is maintained and made final.

 

The identification of goods remains indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition some the goods have been misclassified. The applicant must amend the application to properly classify the goods and either limit the application to goods falling in  two classes or add classes to the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, the applicant must comply with the multiple-class requirements specified in this Office action.

 

It is noted that the applicant argues the identification of goods should be accepted as currently worded should be accepted because the same or virtually the same wording was accepted in prior registration owned by the applicant. Notably, however, even in the applicant’s prior U.S. Registration No. 4745617, copy attached, the applicant clarified the nature of most of the goods at issue.

 

Moreover, “the purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Accordingly, the following wording remains indefinite and must be clarified:

 

International Class 7

 

* The wording “continuous and batch feeding systems” is indefinite. The applicant must specify the form of the goods or list the components of the systems using their common commercial or generic names.

 

* The nature of the “industrial agitators” is unclear. Note that some “magnetic agitators for laboratory use” are classified in International Class 9. Accordingly, the applicant must also classify the goods in the proper class.

 

* The wording “mixers” is too broad because there are a number of different types of mixers falling in at least six classes. See attached excerpt from the Office’s online Trademark ID Manual. For example, there are “electric mixers” (a kitchen machine), “asphalt mixers” and “concrete mixers,” all falling in International Class 7, “audio mixers” and “gas mixers for laboratory use,” in International Class 9, “mixer faucets for water pipes and “mixer taps for water pipes”, falling in International Class 11, and “non-electric food mixers” (goods intended for household use) in International Class 21.

 

* The wording “particle filters” is indefinite because the nature and use of the goods is unclear.

 

* The wording “industrial drying machines for use with bulk materials” is indefinite and must be clarified to ensure proper classification. Note that most dryers are classified in International Class 11. Accordingly, the applicant must clarify the nature of the goods and classify them in the appropriate class.

 

* The wording “rotary valves for use with material handling systems” is indefinite because some “valves” fall in other classes, e.g., “automatic valves” or “electric valves for controlling gas or fluids,” in International Class 9. If these goods are machine parts, they will remain in International Class 7.

 

International Class 9

 

* The applicant must clarify the form and use of the “acoustic controllers”. As worded, the nature and use of the goods is unclear.

 

* The applicant must clarify the form of the “cells” in the wording “load cells for measuring mass, weight or force.”

 

Applicant may adopt the following identification, if accurate: 

 

“machines, namely, material conveyors; material handling machines in the nature of bulk material feeders, blenders, loaders and refillers; material handling equipment, namely, continuous and batch feeding machines for bulk material processing; material handling equipment, namely, industrial agitators for bulk material processing; electric industrial mixers for processing bulk material; conveying equipment, namely, blowers; cyclone separators; material handling equipment machine parts, namely, particle filters for use in processing bulk materials; rotary valves being machine parts for use with material handling systems; replacement parts for the foregoing goods,” in International Class 7;

 

“electrical controllers for material handling machines; flow meters; conveyor belt mass/rate meters; conveyor belt scales; acoustic controllers being electronic controllers for moderating sound levels; digital electronic scales; load cell instruments for measuring mass, weight or force; replacement parts for the foregoing goods,” in International Class 9;

 

“industrial drying machines using air for use with bulk materials,” in International Class 11.

 

Additions Not Allowed: 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).

 

Trademark ID Manual: 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 requirement that the applicant comply with the multiple class application requirements is maintained and made final.

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that may be classified in at least three classes; however, applicant submitted fees sufficient for only two classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

FINAL REFUSAL RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@USPTO.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 16, 2019 for

U.S. Trademark Application Serial No. 88226782

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@USPTO.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”