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

 

 

 

 

 

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.  

 

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 Results

 

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).  However, the applicant must address the following requirements.

 

Summary of Issues Applicant Must Address

• Requirement for Complete Mark Description
• Requirement for Acceptable Identification of Goods (and Compliance with Multiple-Class Application Requirements, if applicable)
• Requirement for Additional Information
• Requirement for Copy of Foreign Registration

 

Mark Description

 

The mark is in color and the application includes the following color claim and mark description:

 

The color(s) blue is/are claimed as a feature of the mark.

 

The mark consists of BLUE NEXUS in stylized format.

 

Applicant must provide an amended description of the mark that includes all the colors shown in the mark.  Specifically, the mark description references the word BLUE in the mark, but does not indicate that the mark wording is in the color blue.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of the stylized blue wording “BLUE NEXUS”.

 

Identification and Classification of Goods – As to Specific Goods in Classes 7, 9, and 12

 

Applicant’s goods are identified as:

 

motors, electric, other than for land vehicles; parts of motors, electric, other than for land vehicles; parts of motors, electric for land vehicles; alternators; direct current generators; starters for motors and engines; parts of machines, namely, electrically operated brushes; motors and engines, other than for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles; machine elements, namely, power transmissions and gearing; machine elements, other than for land vehicles; fuel dispensing machines for service stations, in Class 7.

 

rotary converters; phase modifiers; power distribution or control machines and apparatus; lithium batteries; DC/DC converters; electrical cells and batteries; electronic machines, apparatus and their parts; computers; computer programs; computer software; electric or magnetic meters and testers; conductors, electric; telecommunication machines and apparatus; magnetic cores; resistance wires; electrodes, in Class 9.

 

motors, electric, for land vehicles; motors and engines, for land vehicles; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; machine elements, for land vehicles, in Class 12.

 

This requirement is limited to the wording highlighted above in bold.

 

Class 7

 

The wording “parts of motors, electric for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles” in the identification of goods 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.  In particular, the parts for motors and engines could include “compressors, faucets, pumps, taps, and spark plugs,” and the parts of motors and engines for land vehicles could include “oil coolers, oil tanks, push rods, and spark plugs” all of which are classified in Class 7, as well as thermostats for vehicle engines, which are classified in Class 9.

 

The wording “machine elements, other than for land vehicles” in the identification of goods is indefinite and must be clarified to identify these goods by common commercial name, such as band brakes, block brakes, and hydraulic torque converters.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Class 9

 

The wording “phase modifiers” in the identification of goods 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.  In particular, this wording could encompass phase modifiers for communication apparatus in Class 9, as well as phase modifiers for musical instruments in Class 15.  Therefore, the applicant must specify the use of these goods and classify them in the correct class.

 

The wording “power distribution or control machines and apparatus” in the identification of goods is indefinite and must be clarified to confirm these goods distribute and control electric power, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “electronic machines, apparatus and their parts” in the identification of goods 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.  The applicant must identify these goods by common commercial name, and classify them in the correct class.  For example, these goods could include ticket issuing, reading, and recording machines, and machines for reading credit cards and recording financial instruments, which are both classified in Class 9, “electronic label printing machines for commercial use,” which are classified with other printing machines in Class 7, and “electronic educational game machines for children,” which are classified with other games in Class 28.  Similarly, the parts could include keyboards, which are generally classified in Class 9, but are classified in Class 28, if intended for use as game controllers, and electrical and electronic cables, which are classified in Class 9.

 

The wording “computer programs; computer software” in the identification of goods is indefinite and must be clarified to provide the function of these programs and software, and the field of use, if field specific, such as for operating vehicles autonomously.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant has included the term “or” in the identification of goods in the context “electric or magnetic meters and testers.”  However, this term is generally not accepted in identifications when, as in this case, it is unclear whether applicant intends to use the mark, on all the identified goods.  See TMEP §1402.03(a).  An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language. 

 

The wording “telecommunication machines and apparatus” in the identification of goods is indefinite and must be clarified to specify these goods by common commercial name, such as computer hardware, base stations, cables, and switches.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Class 12

 

The wording “parts and fittings” for automobiles, two-wheeled motor vehicles, and bicycles in the identification of goods 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.  In particular, this wording could encompass structural parts, wheels, tires, lug nuts for vehicle wheels, wheel bearing kits, and bicycle gears, in Class 12, as well as parts for motors and engines, which are already included in the identification in Class 7.  The parts for the automobiles and motor vehicles could also include remote control starters for vehicles, cruise controls for motor vehicles, and simulators for driving or control of vehicles, in Class 9.The applicant must specify the goods by common commercial name and classify them in the correct class.

 

The wording “machine elements, for land vehicles” in the identification of goods is indefinite and must be clarified to identify these goods by common commercial name, such as shock absorbing springs.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

 

motors, electric, other than for land vehicles; parts of motors, electric, other than for land vehicles; parts of motors, electric for land vehicles, namely, oil coolers, oil tanks, push rods, and spark plugs; alternators; direct current generators; starters for motors and engines; parts of machines, namely, electrically operated brushes; motors and engines, other than for land vehicles; parts of motors and engines, namely, compressors, faucets, pumps, taps, and spark plugs; parts of motors and engines for land vehicles, namely, oil coolers, oil tanks, push rods, and spark plugs; machine elements, namely, power transmissions and gearing; machine elements, other than for land vehicles, namely, band brakes, block brakes, and hydraulic torque converters; fuel dispensing machines for service stations; electronic machines, namely, electronic label printing machines for commercial use, in Class 7.

 

rotary converters; phase modifiers for communication apparatus; electric power distribution or control machines and apparatus; lithium batteries; DC/DC converters; electrical cells and batteries; electronic machines, apparatus and their parts, namely, ticket issuing, reading, and recording machines, machines for reading credit cards and recording financial instruments, keyboards, and electric and electronic cables; computers; computer programs for ________ {specify function of programs, and field of use, if field specific, such as operating vehicles autonomously}; computer software for __________ {specify function of software, and field of use, if field specific, such as operating vehicles autonomously }; electric and magnetic meters and testers; conductors, electric; telecommunication machines and apparatus, namely, computer hardware, base stations, cables, and switches; magnetic cores; resistance wires; electrodes; parts of motors and engines for land vehicles, namely, thermostats; parts and fittings for automobiles and two-wheeled motor vehicles, namely, remote control starters for vehicles, cruise controls for motor vehicles, and simulators for driving or control of vehicles, in Class 9.

 

motors, electric, for land vehicles; motors and engines, for land vehicles; automobiles and their structural parts; parts and fittings for automobiles, namely, wheels, tires, and lug nuts for vehicle wheels; two-wheeled motor vehicles, bicycles and their structural parts; parts and fittings for two wheeled motor vehicles and bicycles, namely, wheels tires, motorcycle wheel bearing kits, and bicycle gears; machine elements, for land vehicles, namely, shock absorbing springs, in Class 12.

 

phase modifiers for musical instruments, in Class 15.

 

electronic machines, apparatus and their parts, namely, electronic educational game machines for children, and game controllers in the nature of keyboards for computer games, in Class 28.

 

See TMEP §1402.01.

 

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

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

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 that are classified in at least five classes; however, applicant submitted fees 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Information Requirement – As to Specific Goods in Classes 7, 9, and 12

 

This requirement is limited to the following goods:

 

parts of motors, electric for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles; machine elements, other than for land vehicles, in Class 7.

 

phase modifiers; power distribution or control machines and apparatus; electronic machines, apparatus and their parts; computer programs; computer software; telecommunication machines and apparatus, in Class 9.

 

parts and fittings [for automobiles]; parts and fittings [for two-wheeled motor vehicles, bicycles]; machine elements, for land vehicles, in Class 12.

 

Foreign Registration

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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, an 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.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  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).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Response Guidelines

 

Because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@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 3/15/2019 FOR U.S. APPLICATION SERIAL NO. 88307206

 

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.