To: | Cummins Inc. (IPDocket@mayerbrown.com) |
Subject: | U.S. Trademark Application Serial No. 88310117 - ACUMEN - N/A |
Sent: | July 08, 2019 08:51:58 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88310117
Mark: ACUMEN
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Correspondence Address:
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Applicant: Cummins Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 08, 2019
Upon further review, the following new identification requirement is issued. The examining attorney apologizes for any inconvenience.
Requirement – Identification
All identifications must be precise and identify the goods and/or services with particularity using common or commercial names. TMEP §1402.01. Applicant’s identification in International Class 009 requires amendment.
Current Identification
Applicant’s current identification in International Class 009 reads:
International Class 009: Computer software, hardware and mobile applications for use in connection with engines and equipment for land, marine, mining, oil and gas, rail, power generation, construction and agriculture, namely, computer software, hardware and mobile applications for performing engine diagnostics and predictive prognostics and maintenance, filtration diagnostics and predictive prognostics and maintenance, and for providing expert repair recommendations, diagnostics, prognostics, prognostic service scheduling, troubleshooting, fault alerts and performance and trend monitoring; Telematics apparatus, namely, wireless Internet devices which provide telematic services and have a cellular phone function.
The identification is unacceptable as presently worded because certain goods and/or services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods and/or services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods and/or services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Specifically, the wording “computer software … and mobile applications” must be specified as “downloadable” and/or “recorded” to clarify the nature of goods appropriate for International Class 009. Therefore, this wording must be clarified to specify whether the software is “downloadable” and/or “recorded” in International Class 009, OR, to specify that the applicant is providing the temporary, online non-downloadable use of the software, if applicable, which would be a service in International Class 042. Please clarify and reclassify as applicable.
Suggested Amendment
Applicant may adopt the following identification language (applicant should note that the suggested amended language appears in bold font):
International Class 009: Recorded computer software, computer hardware and downloadable mobile applications for use in connection with engines and equipment for land, marine, mining, oil and gas, rail, power generation, construction and agriculture, namely, recorded computer software, computer hardware and downloadable mobile applications for performing engine diagnostics and predictive prognostics and maintenance, filtration diagnostics and predictive prognostics and maintenance, and for providing expert repair recommendations, diagnostics, prognostics, prognostic service scheduling, troubleshooting, fault alerts and performance and trend monitoring; Telematics apparatus, namely, wireless Internet devices which provide telematic services and have a cellular phone function.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
Response Guidelines
If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below. Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.
If applicant does not respond to this Office action within the six-month period for response, International Class 009 will be deleted from the application. The application will then proceed with International Classes 037, 038, 042, and 045 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
How to respond. Click to file a response to this nonfinal Office action
/Andrea Hack/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
571-272-5413 (ph.)
andrea.hack@uspto.gov
RESPONSE GUIDANCE