Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 19, 2019

 

This letter responds to the applicant’s communication filed on October 23, 2019.   The examining attorney acknowledges the applicant’s copy of the foreign registration and online renewal printout, and has entered the same into the record.   For reasons that follow, the identification of goods requirement is MAINTAINED and the following new issue is raised.  

 

NEW ISSUE – FOREIGN REGISTRATION REQUIRES PROPER EVIDENCE OF RENEWAL

 

In the initial Office Action dated May 11, 2019, the examining attorney required a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin, along with a signed translation, to support the section 44(e) filing and registration basis.  A copy of the same was not provided with the application.

 

By way of response the applicant has provided a true copy of the same along with a signed translation.  While otherwise acceptable, the registration has a registration expiration date of December 31, 2010, extending 10 years from the last day of the month of the application date. 

 

If the record indicates that the foreign registration has expired or will expire before the U.S. registration will issue, the examining attorney must require that an applicant submit a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States, along with an English translation. 37 C.F.R. §2.34(a)(3)(iii).  TMEP § 1004.01(a).

 

Applicant has in fact provided evidence of renewal of the same.  However this evidence is in the nature of a printout from the German intellectual property office’s website and therefore is insufficient.  A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the registration has been renewed in that country and is in full force and effect, unless accompanied by a certification from the issuing office.  TMEP § 1004.01(a).

 

Therefore, applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States, along with an English translation.  This requirement is in the nature of a new issue.    

 

IDENTIFICATION OF GOODS – MAINTAINED

 

In the initial Office Action dated May 11, 2019, the examining attorney found the identification of goods to be indefinite because it did not identify the goods with the requisite clarity and specificity.  Applicant was advised to identify the goods with clarity and specificity using common commercial name.  A suggested identification of goods was provided.

 

By way of response the applicant argues that the original identification of goods is sufficiently clear and definite, reading as follows: coordinate measuring machines and their parts; styli for coordinate measuring machines, styli racks and their parts for coordinate measuring machines.  Applicant notes that identifications similar in nature have been allowed by the USPTO previously.

 

The examining attorney is not persuaded by the applicant’s argument and/or evidence.  While perhaps arguably definite, the identification does not make clear that the styli and styli racks are parts of coordinate measuring machines.  While this may be clear to someone familiar with coordinate measuring machines, it would not necessarily be clear to someone unfamiliar with the same.  Therefore the identification should make clear that styli and styli racks, and any parts thereof, are all parts of coordinate measuring machines.  

 

It is further noted that the while the term “parts” alone is generally indefinite, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when such wording follows a definite identification.  TMEP §1402.03(a).  Accordingly, this terminology is preferable to the wording “and their parts.”

 

Accordingly, the identification requirement is maintained.  Applicant may adopt the following, which is seen to merely clarify applicant’s goods as coordinate measuring machines and their parts: Coordinate measuring machines and structural and replacement parts therefor, including styli and styli racks.

 

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual is available for assistance with identifying and classifying goods and services.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

GENERAL INFORMATION

 

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  

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

/John S. Yard/

John S. Yard

Examining Attorney

Law Office 115

(571)272-9486

john.yard@uspto.gov

 

 

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 November 19, 2019 for

U.S. Trademark Application Serial No. 88322553

 

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. 

 

 

/John S. Yard/

John S. Yard

Examining Attorney

Law Office 115

(571)272-9486

john.yard@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 19, 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.”