Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 15, 2019

 

This Office action is in response to applicant’s communication filed on October 7, 2019.  In the response, applicant amended the Class 7 and 9 identification of goods, disclaimed the wording SPEED TOOL and perfected a 2(f) claim based upon ownership of prior registrations.  The disclaimer is accepted and made of record.  Based upon the claim of acquired distinctiveness, the 2(e)(4) refusal issued in the initial office action is withdrawn.   The identifications of goods contain indefinite wording which must be amended to ensure proper classification of the goods.   The disclaimer is accepted and made of record.  The identifications of goods contain indefinite wording which must be amended to ensure proper classification of the goods. 

ADVISORY

Applicant has included the term “and/or” or “or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a). 

An application must specify, in an explicit manner, the particular goods 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 “and/or” or “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods specified using definite and unambiguous language. 

IDENTIFICATION OF GOODS

Class 7

The wording “Machine tools, for forming, shaping or machining metal or plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; milling, drilling, copying and turning machines, tool turrets and tool disc turrets; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; rotary indexing tables; tool stores, namely, tool magazines; machine tool holders; machine tool and workpiece positioning holders; workpiece holders being parts of machines, interchangeable chucks for machines excluding land vehicles; operating devices being parts of machines for the aforesaid machines” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please note that all machine goods must specify the function of the machines. Further, without further specification these goods cannot be properly classified.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

Applicant may substitute the following wording, if accurate: 

Class 7 - Machine tools (please delete the comma here) for forming, shaping and (please replace the conjunction “or” with “and”) machining metal, (please insert a comma here) plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing;  Milling machines for ___________ [specify the purpose of these machines, e.g. for metalworking]; (please insert a semi-colon here) drilling machines for ___________ [specify the purpose of these machines, e.g. for metalworking], copying machines, namely, ______________ [specify these goods by their common commercial names and state the purpose of these machine; please note that photo-copying machines and electrostatic copying machines are Class 9 goods]; (please insert a semi-colon here) Power operated metalworking machine tools, namely, turning tools; (please insert a semi-colon here) machine tool turrets  and tool disc turrets, namely, ___________ [specify these goods by their common commercial names, e.g. indexing machine tool holders]; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, namely, ___________ [specify these goods by their common commercial names, e.g. vices, clamps, etc.] gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; rotary indexing tables for __________ [to ensure proper classification of these goods, specify the function of these tables]; tool stores, namely, machine tool magazines, namely, ___________ [specify these goods by their common commercial names, e.g. metal tool trays sold empty and specially adapted for polishing machines, etc.]; machine tool holders; machine tool and workpiece positioning holders; workpiece holders being parts of machines; (please place a semi-colon here) Power tools, namely, interchangeable chucks for machines for ___________ [specify the function of these goods, e.g. for boring, grinding and sharpening tools] and excluding land vehicles; power tools being parts of machines, namely, motor-driven spindles with and without swiveling units; industrial robots for machine handling and positioning; industrial robots for separating, cutting, joining, welding, milling, deburring, grinding, peeling, rolling and polishing; machines for gripping, moving and positioning mechanical components, including workpieces and/or tools; tool changers being parts of machines for mechanical rotation, turning and lifting; machine parts in the nature of conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpieces; operating devices being parts of machines for the aforesaid machines, namely, ___________ [specify these goods by their common commercial names, e.g. metal tool trays sold empty and specially adapted for polishing machines, etc.]

Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.

Class 9

The wording “computer software for use in operating machine tools; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices, laser measurement apparatus; signalling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; supervision devices, namely, surveillance apparatus for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets;” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

Applicant may substitute the following wording, if accurate: 

Class  9 - Industrial automation controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets with computers and data processing devices connected thereto; computers; computer software for operating machine tools;  measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices and laser measurement apparatus; signalling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; supervision devices, namely, surveillance apparatus, namely, _________ [specify these goods by their common commercial names, e.g. electronic video surveillance installations] for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; computers and computer programs for controlling, regulating and simulating manufacturing installations, industrial robots, industrial mobile platforms and tools, and tool carriers

Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.

 

In the 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 as “apparatus,” “components,” “devices,” “materials,” or “parts,” 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).

Applicant’s goods 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).

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.

 

 

 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/William H. Dawe, III/

Examining Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

Bill.Dawe@USPTO.GOV (not for fomal responses)

 

 

 

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 15, 2019 for

U.S. Trademark Application Serial No. 88310502

 

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. 

 

 

/William H. Dawe, III/

Examining Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

Bill.Dawe@USPTO.GOV (not for fomal responses)

 

 

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 15, 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.”