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: 3/29/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

Search of Office’s Database of Marks

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Summary of Issues:

 

• Disclaimer required;
• Amended mark description required;
• Amended identification of goods required;
• Foreign registration required; and
• Advisory regarding dual filing bases.

 

Disclaimer Required

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “RFID” because it is not inherently distinctive.  This unregistrable term is at best merely descriptive of a feature of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

RFID is defined as “radio-frequency identification”.  See, e.g., attached Merriam-Webster Dictionary definition of RFID.  The applicant expressly describes its goods as including “RFID transponders”.  See, Identification of Goods in Application.  The wording “RFID” in the mark merely describes this feature of the goods.

 

Applicant may respond to this issue by submitting a disclaimer in the following format. 

 

            No claim is made to the exclusive right to use “RFID” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Applicant must also respond to the following requirements and should note the advisory set forth below.

 

Amended Mark Description Required

 

The description of the mark in the application is:

 

            The mark consists of the wording "RUD RFID CONNECT IT", with a circular design element to the right of the wording.

 

Although applicant submitted a drawing showing the mark in color and a color claim, applicant did not include in the description the required specification of where the color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must amend the description to include this information.  See TMEP §807.07(a)(ii). 

 

If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:

 

The mark consists of the wording “RUD RFID CONNECT IT” in a stylized font in the color blue.  The wording “CONNECT IT” appears beneath the wording “RUD RFID”.  A blue circle containing a stylized radio signal comprised of two curved lines and a circle appears to the right of the wording “RUD RFID CONNECT IT”.  All white in the drawing represents transparent background space.

 

Applicant must also respond to the following requirements and should note the advisory set forth below.

 

Amended Identification of Goods Required

 

The classification and identification of goods in the application are:

 

Class 006:       Chains, chain links, link pins, chain joints, chain sprockets, swivel shackle; devices and components of metal for the securing, coupling, shortening, guiding and tensioning of chains, belts and/or ropes; grabs, hooks, eyes, retaining loops, expansion braces, claws and shackles, of metal, for use in connection with chains, belts and/or ropes; shaped metal parts, included in class 6; chain conveyors, and cogged wheels, deflector wheels, conveyor wheels, conveyor rollers, track rollers and conveyor rails; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 007:       Mechanical or hand-operated apparatus for lifting and suspending loads with the aid of chains, straps and/or ropes; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 008:       Chain harnesses and hand-adjustable and/or non-adjustable expansion devices for chain harnesses; tensioning apparatus and spring buffers for lashing loads; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 009:       Measuring, signaling, testing and regulating apparatus and instruments; apparatus for recording, transmission and reproduction of electric data; magnetic data carriers, data processing equipment and computers; computer peripheral devices, in particular docking stations; electric display apparatus; computer programs, computer software; data carriers; materials testing apparatus and machines; electrical signal transmitters and receivers; transponders, in particular radio-frequency transponders; writing and reading apparatus for electric data; RFID hardware and accessories, included in class 9; electric identification systems, in particular RFID systems; electronic testing systems, in particular inspection testing systems; electronic information systems; load and overload indicator devices and elements for chains, ropes and/or straps, loading forks, in particular with integrated data transmission and data recording devices and/or sensors, in particular load sensors; all the aforesaid goods in particular for the monitoring and/or testing, controlling and/or load monitoring of load-securing and lashing devices

 

The wording that is underlined in the identification of goods, above, is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example,

 

·       The wording includes indefinite terms such as “devices”, “components”, and “apparatus”.  In an identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words, such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

·       The identification for software and computer programs must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

·       The identifications for systems is indefinite must be clarified 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, in addition to describing the nature, purpose, or use of the systems, listing the systems’ parts or components, using common generic terms and referencing the primary parts or components of the systems first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).

 

The wording that is italicized in the identification of goods, above, 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.  For example,

 

• The wording “Chains” in International Class 006 could include chains for conveyors, which are properly classified in International Class 007.

 

• “Chain conveyors” are properly classified in International Class 007 rather than 006.

 

• “Mechanical or hand-operated apparatus for lifting and suspending loads with the aid of chains, straps and/or ropes” in International Class 007 encompasses manually-operated hoists, which are properly classified in International Class 008.

 

• “Chain harnesses and hand-adjustable and/or non-adjustable expansion devices for chain harnesses” in International Class 008 encompass harnesses, which are properly classified in International Class 018.

 

• “computer programs; computer software” in International Class 009 encompasses downloadable software, which is properly classified in International Class 009, and providing temporary use of non-downloadable software, which is properly classified in International Class 042.

 

• The systems in International Class 009 should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

Applicant may adopt any or all of the following identification, if accurate.  Applicant must also adopt the appropriate international class number(s), and, if applicant adopts goods and/or services in more than one class, it must comply with the multiple-class application requirements set forth below.  In the following, proposed amendments are in bold.  Where the amendments include brackets, applicant must remove the brackets and incorporate the bracketed information into its amended identification.

 

Class 006:       Metal Chains, metal tension links, metal hardware in the nature of chainlink pins, structure joint connectors of metal in the nature of chain joints, metal hardware in the nature of chain sprockets, metal swivel shackle for lifting and rigging; metal hardware for securing, coupling, shortening, guiding and tensioning chains, belts and ropes, namely, grabs, hooks, eyes, retaining loops, expansion braces, claws and shackles; refractory shapes of metal, included in class 6; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 007:       Mechanical hoists for lifting and suspending loads with the aid of chains, straps and/or ropes; chain conveyors; gears for machines in the nature of cogged wheels; machine wheels in the nature of deflector wheels and conveyor wheels; conveying machines in the nature of roller conveyors; track rollers and conveyor rails being parts of conveying machines; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 008:       Hand tools in the nature of hand-adjustable and non-adjustable expanders for chain harnesses; hand-operated hoist for lifting and suspending loads comprised primarily of a metal hook and chains, straps, and ropes; all the aforesaid goods in particular with integrated data transmission and data recording devices, in particular RFID transponders, and/or sensors, in particular load sensors

 

Class 009:       Measuring, signaling, testing and regulating apparatus and instruments, namely, {specify the common commercial or generic name for the goods, e.g., measuring tapes, measuring wheels, etc.}; apparatus for recording, transmission and reproduction of electric data; blank magnetic data carriers, data processing equipment and computers; computer peripheral devices, in particular docking stations; electric display panels; downloadable computer programs for {specify the function of the programs, and, if the programs are content- or field-specific, the content or field of use}, downloadable computer software for {specify the function of the software, and, if the software is content- or field-specific, the content or field of use}; blank optical data carriers; materials testing apparatus and machines, namely, metal strength testing machines and textile testing machines; electrical signal transmitters and receivers; transponders, in particular radio-frequency transponders; writing and reading apparatus for electric data in the nature of computers; RFID hardware and accessories, included in class 9, namely, {specify the common commercial or generic name for the hardware and accessories, e.g., RFID readers, RFID tags, etc.}; electric identification systems, in particular RFID systems primarily comprised of RFID readers and RFID tags; electronic testing systems, in particular inspection testing systems primarily comprised of metal strength testing machines and textile testing machines; electronic information systems primarily comprised of computer hardware; load and overload indicator devices and elements for chains, ropes and/or straps, loading forks, in particular with integrated data transmission and data recording devices and/or sensors, in particular load sensors; all the aforesaid goods in particular for the monitoring and/or testing, controlling and/or load monitoring of load-securing and lashing devices

 

Class 018:       Harnesses in the nature of chain harnesses

 

            Class 020:       Non-metal hardware in the nature of springs for lashing loads

 

 

Class 042:       Providing temporary use of non-downloadable computer software for {specify the function of the software, and, if the software is content- or field-specific, the content or field of use}

 

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.

 

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

Multiple-Class Application Requirements

 

The application identifies goods and/or 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/or 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted fees sufficient for only 4 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant must also respond to the following requirement and should note the advisory set forth below.

 

Foreign Registration Required

 

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).

 

Applicant should note the following advisory.

 

Advisory Regarding Dual Filing Bases

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration 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/or services based on Section 1(b).

 

Response to Office Action Required to Avoid Abandonment

 

Applicant may call or email the assigned trademark examining attorney with questions about this Office action.  The trademark examining attorney cannot provide legal advice or statements about applicant’s rights, but the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/29/2019 FOR U.S. APPLICATION SERIAL NO. 88261872

 

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 3/29/2019 (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.