Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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:  October 16, 2019

 

This application was approved for publication on September 11, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Identification of Goods

 

The wording “computer software” and “computer software controllers” in “electronic, electrical and computer-generated controls in the nature of computer hardware and computer software for controlling plasma arc cutting machines and replacement parts therefor; electronic, electrical, computer hardware, and computer software controllers for waterjet machines and pumps” in International Class 09 must be clarified because it is too broad and could include goods and services in two international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, downloadable computer software is classified in Class 9 while providing a website featuring online non-downloadable computer software would be classified in Class 42. Moreover, if the software is sold as an integral component of machines in Class 7, then the ID must specify, and the software would be classified in the same class as the machines.

 

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 adopt the following identification, if accurate [changes are shown in bold typeface]: 

 

CLASS 07 – “Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; plasma arc systems comprised of plasma arc torches, power supplies, control panels, water supplies, high frequency consoles, gas consoles, noise and pollution suppressors, counter/timers, and replacement parts therefor; plasma arc cutting torches; plasma arc cutting torch cartridges and plasma arc cutting torch consumables in the nature of nozzles, retaining caps, swirl rings, shields, shield caps, o-rings, cartridges, deflectors, and cooling tubes; waterjet systems comprised of waterjet cutting machines, pumps and consumables in the nature of nozzles, orifices, alignment inserts, housing inserts, adaptors, valves, tubes, nuts, threaded discs, seats, seals, hoops, back-ups, cylinders, stems, rings, bearings, caps, poppets, springs, adaptors, pins, filters, and needles;” and

 

CLASS 09 – “Electrical power supplies for plasma arc cutting machines and replacement parts therefor; electronic, electrical and computer-generated controls in the nature of computer hardware and downloadable computer software for controlling plasma arc cutting machines and replacement parts therefor; electronic, electrical, computer hardware, and downloadable computer software controllers for waterjet machines and pumps.”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Miroslav Novakovic/

Miroslav Novakovic, Esq.

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 108

Office: (571) 272-2866

Email: miroslav.novakovic@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. 88267141

 

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. 

 

 

/Miroslav Novakovic/

Miroslav Novakovic, Esq.

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 108

Office: (571) 272-2866

Email: miroslav.novakovic@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.”