Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-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). A link to the appropriate TEAS response form appears at the end of this office action. 

 

Issue date:  November 07, 2019

 

This office action is in response to applicant’s communication filed on September 13, 2019.

 

The foreign registrations have been entered into the application record. However, a determination of whether the U.S. identification are within the scope of the foreign registrations cannot be made until the Requirement For Information #2 below is satisfied.

 

The requirement for information made in the first office action has been satisfied.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it is remains 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 more than one international class. In addition, some of the goods and services appear to be misclassified. Detailed explanations are included within the suggested identification below.

 

Additionally, 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.

 

Finally, some of the wording is outside the scope of the original identification. See TMEP §1402.06(a)-(b). Such wording is explained in brackets in the suggested identification below and must be deleted.

 

Classes 40 and 44 are acceptable as currently worded.

 

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 for use with remote monitoring systems, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus in the nature of portable radios, vehicular radio communication machines and apparatus in the nature of radios for vehicles, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders in the nature of {specify what these goods are}, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm fields, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm fields, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer networks; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost {specify what this is}, vacuum {specify what this is}, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism, (non-GPS) not via GPS; 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 machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters for transmitting signals to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; {this is outside the scope of the original identification} flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements and their structural parts, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus in the nature of portable radios, vehicle radio communication machines and apparatus in the nature of radios for vehicles, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders in the nature of {specify what these goods are}, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring electric control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements and their structural parts, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines,” in International Class 9;

 

“Providing business information in the nature of the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing business information in the nature of location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans; business operation of water treatment installations,” in International Class 35;

 

“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 to ensure proper functioning; {this wording was moved to another class} pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage;, and maintenance of tools used for the above-mentioned services; {this wording is outside the scope of the original identification} plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; {duplicate} repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities 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 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 maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving 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; repair or maintenance of electronic machines and implements and their parts and accessories, not including software,” in International Class 37;

 

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

 

“Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring of 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 assistance or consultancy relating to computer systems technology for optimization of 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; 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 of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth in soil; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; {this wording has been moved to other classes}; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm fields, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water {this wording is outside the scope of the original identification} by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment 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 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; 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; farming research,” in International Class 44.

 

The requirement for an acceptable amended identification is continued and maintained.

 

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.

 

Requirement For Information #1

 

This requirement applies to the following wording in Class 9: radio direction finders, boost, vacuum

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record. See 37 C.F.R. §2.61(b); TMEP §814. The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website, or providing weblinks without attaching the relevant pages, is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Requirement For Information #2

 

To permit proper examination of the application, applicant must submit additional information. See 37 C.F.R. §2.61(b); TMEP §814. Specifically, in light of the seven foreign registrations, some with very lengthy identifications, and the lack of a one-to-one correspondence between the identifications in the foreign registrations and the original identification in the U.S. application, applicant must – for each item in the original U.S. identification – specify the foreign registration number and identification item on which a Section 44(e) basis is claimed. Alternatively, applicant may delete the Section 44(e) basis and proceed based on Section 1(b) only.

 

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

 

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

 

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this non-final office action.

 

• 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 law office referenced in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 07, 2019 for

U.S. Trademark Application Serial No. 88246849

 

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. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@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 November 07, 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.”