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: 3/15/2019

 

The undersigned trademark examining attorney has reviewed the referenced application. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

The Office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods and services. Further, it is overly broad because it encompasses goods and services in classes other than the three that are included in the application. In addition, some of the services appear to be misclassified.

 

Moreover, the identification contains parentheses. Generally, applicants should not use parentheses in identifications so as to avoid confusion with the USPTO’s practice of using parentheses to indicate goods and services that have been deleted from registrations. 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 and incorporate the parenthetical information into the identification.

 

The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that appears within brackets offers guidance. And wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in standard font, not in bold, italics or strikethrough or within brackets.

 

Applicant may adopt the following identification, if accurate:

 

“Telecommunications apparatus, namely, {specify what the goods are, e.g., audiovisual receivers} for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring {specify what is being monitored}; computer programs, recorded, for {specify the function of the software}; downloadable and recorded {or delete one option, as appropriate} computer programs for monitoring {specify what is being monitored}; downloadable computer programs (downloadable software) for {specify the function of the software}; computers for telecommunications; mobile information computer terminals; Internet servers; downloadable and recorded {or delete one option, as appropriate} computer software for network administrations; computers for remote access to computer networks; electrical apparatus for electrical remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring {specify}; water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for {specify device that is being controlled}; automated environmental notification alarm systems for detecting signals from various kinds of comprised of sensors and signal transmitters ing to a supervisor; alarms for the detection of {specify, e.g., fires and burglars}; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded {or delete one option, as appropriate} computer programs for {specify the function, e.g., operating a} GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; flowmeters; wireless communication devices for voice, data or image transmission machines and implements; telecommunications machines and implements, namely, {specify} and their structural parts and accessories {accessories must be specified or deleted}; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus with screen, namely computer monitors; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements for {specify, e.g., reading credit cards} and their structural parts and accessories {accessories must be specified or deleted}; downloadable image files containing {indicate content or subject matter}; pre-recorded video discs and video tapes featuring {indicate subject matter},” in International Class 9;

 

“Providing inventory management information relating to the location and operation status for works by of agricultural machines and implements and construction machines and apparatus; providing inventory management information relating to the location and operation status for works by of earthmoving machines and apparatus,” in International Class 35;

 

“Remote monitoring of operation status of air-conditioning installations, heating installations, plumbing systems, etc. of buildings by telecommunications; remote monitoring of operation status of building equipment; Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units; remote monitoring of wastewater treatment apparatus; pump repair or maintenance; plumbing contractor services, namely, supervision of the whole plumbing services,; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; remote monitoring of operation status of agricultural irrigation units; remote monitoring using a sensor for growing conditions of farm products; repair or maintenance of cultivating machines and implements and their parts and fittings; remote monitoring of machines and instruments for measuring quality, temperature, level and flow of feed water supplied into a farm field; remote monitoring of water treatment apparatus for agricultural water; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; remote monitoring of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; remote monitoring of weighing apparatus and instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities or and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing information relating to the location and operation status for works by agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for works by earthmoving machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; remote monitoring of water treatment installations; repair or maintenance of electronic machines and implements and their parts and accessories, not including software,” in International Class 37;

 

“Technical guidance assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations,” in International Class 40;

 

“Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical guidance assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; technical guidance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; remote monitoring of computer systems via cable or wireless telecommunications networks and computer communications networks for use in management (recordation, notification, measurement, report of facility fault, etc.) of apparatus for use by water suppliers; {duplicative of previous item} design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services relating to of web sites; design services of {specify} using computer graphics; design services of {specify}; soil diagnosis, namely, detection of contaminants in soil; testing, inspection and research services in the fields of soil contamination investigation, meteorologicaly information and agriculture; crop management via cloud computing network; remote monitoring of farm products via cloud computing network; remote monitoring of farm fields via cloud computing network; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farming field information (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks; designing of machines, apparatus, instruments (including and their parts) or systems composed of such machines, apparatus and instruments for {specify what these goods do}; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers, and electronic machines and implements, (not including word processors and electrostatic copying machines); providing temporary use of online non-downloadable computer programs on data networks for {specify the function of the programs}; remote monitoring of operation status of air-conditioning installations, heating installations, and plumbing systems, etc. of buildings by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of agricultural irrigation units to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning,” in International Class 42; and

 

“Farming consultation services, namely, remote monitoring of growing conditions using a sensor for growing conditions of farm products; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks,” in International Class 44.

 

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

 

For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.

 

Multi-Class Application Requirements

 

The application identifies goods and services in more than one international class. Therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and services 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 fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least six classes. However, applicant submitted a fee sufficient for only three 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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant Must Submit The Foreign Registrations

 

The application specifies a basis under Trademark Act Section 44(e). However, it does not include a copy of a foreign registration. An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).

 

Requirement For Information

 

For each foreign registration on which Section 44(e) is based, applicant must provide (i) the expiration date, (ii) the renewal date(s), and (iii) the renewal expiration date(s).

 

Failure to comply with a requirement for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Advisory Regarding Filing Bases

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on foreign registrations under Section 44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and services based on Section 1(b).

 

TEAS RF Application Requirements

 

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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571.270.1528

katherine.chang@uspto.gov

 

 

 

TO RESPOND: Go to response forms and choose option #1. 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 TSDR. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact TrademarkAssistanceCenter@uspto.gov or call 800-786-9199. For more information on checking status, see status and documents.

 

TO UPDATE CORRESPONDENCE ADDRESS: Use the change of address form.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/15/2019 FOR U.S. APPLICATION SERIAL NO. 88246849

 

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 3/15/2019 (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.