Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  November 22, 2019

 

 Applicant must address issues shown below.  On November 22, 2019, the examining attorney left a voicemail and outlined the issue discussed below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

This letter responds to the applicant's communication filed on September 25, 2019.  The applicant responded to the Office action by offering arguments in favor of registration with regards to the Section 2(d) refusals, and added the additional classes to the application, with the correct language.  

 

Refusal of Registration: Likelihood of Confusion

 

Registration of the applied-for mark was refused because of a likelihood of confusion with two marks for similar or related goods.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  The refusal is continued, but will be withdrawn if the applicant accepts the following suggested limitations to Class 7.  The applicant may also elect to delete Class 7 from the application without limiting the language.  In that case, the application will move forward with the remaining three classes.

 

The suggested limitation for Class 7 is shown with the proposed removal shown with a strikethrough, and the proposed addition in bold:

 

Class 7:           Machine parts, namely, ball bearings, deep-groove ball bearings, angular contact ball bearings, self-aligning ball bearings, needle roller bearings, roller bearings, thrust ball bearings, thrust roller bearings, tapered roller bearings, magnetic bearings, linear bearings, anti-friction bearings, mounted bearings, rotary bearings, telescopic bearings, linear ball bearings, flanged roller bearings, metric ball bearings, anti-friction roller bearings, radial roller bearings, differential bearings, insert bearings, swing bearings, pinion bearings, and shock bearings; Vehicle engine components, namely, ball bearings, deep-groove ball bearings, angular contact ball bearings, self-aligning ball bearings, needle roller bearings, roller bearings, thrust ball bearings, thrust roller bearings, tapered roller bearings, magnetic bearings, linear bearings, anti-friction bearings, mounted bearings, rotary bearings, telescopic bearings, linear ball bearings, flanged roller bearings, metric ball bearings, anti-friction roller bearings, radial roller bearings, differential bearings, insert bearings, swing bearings, pinion bearings, and shock bearings; Bearings as parts of agricultural machinery, namely, tractors, backhoes, mowers, cultivators, seeders, tillers, harvesters, sprayers, plows, planters, and combines; Belts, namely, belts for engines and belts for conveyors; Appliance parts for washing machines, dishwashers, electric food blenders, electric food processors, and vacuum cleaners, namely, couplings, springs, pumps, clutches, valves, motors, handles, fuses, filters, pipes, sockets, control knobs, and seals such as door boot seals and tub seals; Roller chains being parts of industrial machines, combine harvesters, and power-operated lifting and moving equipment; Sprockets as parts of industrial machines, combine harvesters, and power-operated lifting and moving equipment; Engine seals for use in land vehicle engines, namely, engines of power sport vehicles, go-karts, tractors and bicycles, namely, mechanical seals and oil seals; and Seals as parts for industrial machines, and combine harvesters, and power-operated lifting and moving equipment, namely, mechanical seals and oil seals.

 

Information on How to Respond to this Office Action

 

As discussed, applicant may resolve outstanding refusal via email:

The simplest way to resolve the outstanding refusal is to email the examining attorney and authorize an Examiner’s Amendment. If applicant agrees to the suggested language, a simple email will resolve the outstanding issue[s].  Please put the Serial Number of the case in the subject line of the email, and expressly adopt the above suggestions in the body of the email.

 

An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

For assistance addressing the legal issues raised in this action, please contact the undersigned attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at 1-800-786-9199 or 571-272-1000.

 

Please note that although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) 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. 

 

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

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.  

 

 

/Susan Leslie DuBois/

Examining Attorney

Law Office 111

571.272.9154

susan.dubois@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 November 22, 2019 for

U.S. Trademark Application Serial No. 88288045

 

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. 

 

 

/Susan Leslie DuBois/

Examining Attorney

Law Office 111

571.272.9154

susan.dubois@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 22, 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.”