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:  March 02, 2020

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On March 2, 2020, the examining attorney and Jeffrey H. Handelsman discussed the issues 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.

 

            The examining attorney notes that an examiner’s amendment which was previously prepared was accidently sent out today. Please be advised that the content of said examiner’s amendment was not added to the record.  The examining attorney apologizes for any confusion this may have caused applicant.

 

PLEASE NOTE: Assuming applicant does not add Class 42 services to the application, applicant is encouraged to e-mail the trademark examining attorney to resolve the issues raised below at Bill.Dawe@uspto.gov.  Upon receipt of the e-mail accepting the amendments set forth below, the examining attorney will prepare an examiner’s amendment, enter the amendments into the databases and approve the application for publication.

 

IDENTIFICATION OF GOODS

The wording “software” and “programs” 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.  Specifically, as of January 19, 2019, all “software” and “programs” must be designated either “downloadable” in Class 9 or “non-downloadable in Class 42.  Without said designations, the “software” and “programs” are indefinite as they could be classified in two different classes. Therefore, applicant must amend the identification and comply with the multi-class requirements set forth below. 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; downloadable 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, downloadable software for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; computers and downloadable 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.

 

REQUIREMENTS OF MULTI-CLASS APPLICATION

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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

 

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

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/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.  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 March 02, 2020 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 March 02, 2020, 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.”