To: | SEIBU GIKEN CO., LTD. (docketing@s-n-h.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88363342 - SKY-SAVE - 442.2006 |
Sent: | 6/15/2019 11:24:31 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88363342
MARK: SKY-SAVE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SEIBU GIKEN CO., LTD.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/15/2019
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 OF OFFICE’S DATABASE OF MARKS
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 should note the following requirements:
The wording specified below in the identification of goods must be clarified because it is indefinite and 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 goods for machines in Class 007 where indicated.
However, while the word “parts” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a). Additionally, the wording “parts therefor” alone is acceptable when it follows a definite identification for machines in International Class 7. Id
For examples of acceptable identifications for parts, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
Applicant may substitute the following wording, if accurate:
IC 007: gas filtration devices, namely, {specify goods, e.g., gas filters for motors and engines, etc.}; components for gas filtration elements, namely, {specify goods, e.g., gas filters for motors and engines, etc.}; rotors, namely, {specify goods, e.g., internal combustion engines land vehicle parts being distributor rotors, etc.}; heat exchangers, namely, {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; rotary regenerative heat exchangers, namely, {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; installations for treating gases, namely, {specify goods, e.g., gas filters for motors and engines, etc.}; rotary heat exchangers, namely, {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; ceramic heat exchangers, namely, {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; aluminum heat exchangers, namely, {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; cassettes for heat exchangers, namely, for heat exchangers {specify goods, e.g., being parts of machines, being parts of engines not for land vehicles, etc.}; parts and fittings for all the aforesaid goods
IC 011: industrial dehumidifier; industrial dryers for heating and dehumidifying; dehumidifiers for commercial use; air conditioning apparatus and installations; air conditioning installations; air filtering installations; air filters for industrial installations; clean room installations; gas scrubbing installations; heat exchangers for chemical processing; heat exchangers not being parts of machines; air purifier; gas filtration devices, namely, {specify goods, e.g., filters and filtering devices for gas conditioning, etc.}; volatile organic compound concentrators, namely, {specify goods, e.g., recuperative thermal oxidizers for industrial air pollution control of volatile organic compounds, catalytic oxidizers for industrial air pollution control of volatile organic compounds, etc.}; components for gas filtration elements, namely, {specify goods, e.g., air filters for industrial installations, etc.}; filtration elements for adsorbing volatile organic compounds, namely, {specify goods, e.g., air filters for industrial installations, etc.}; gas filtration devices having volatile organic compound adsorbing rotors, namely, {specify goods, e.g., filters and filtering devices for gas conditioning, etc.}; installations for air-conditioning purposes; installations for drying, ventilating, and dehumidifying purposes, namely, {specify goods e.g., drying apparatus for use in heating, ventilation systems, air conditioning systems and refrigeration systems, drying apparatus for chemical processing, dehumidifiers, ventilating fans for commercial and industrial use, etc.}; installations for removing impurities from gases, namely, {specify goods, e.g., filters and filtering devices for gas conditioning, etc.}; heat exchangers, namely, {specify goods, e.g., other than parts of machines, etc.}; rotary regenerative heat exchangers, namely, {specify goods, e.g., other than parts of machines, etc.}; installations for treating gases, namely, {specify goods, e.g., filters and filtering devices for gas conditioning, etc.}; rotary heat exchangers, namely, {specify goods, e.g., other than parts of machines, etc.}; heat exchanger rotors, namely, {specify goods, e.g., structural parts for heat exchangers other than parts of machines, etc.}; ceramic heat exchangers, namely, {specify goods, e.g., other than parts of machines, etc.}; aluminum heat exchangers, namely, {specify goods, e.g., other than parts of machines, etc.}; cassettes for heat exchangers, namely, {specify goods, e.g., for heat exchangers other than parts of machines, etc.}; cassettes for concentrators for volatile organic compounds, namely, {specify goods, structural parts of air filtering installations, etc.}; rotors, namely, {specify goods, e.g., replacement parts of air filtering installations, replacement parts of dehumidifiers, etc.}; honeycomb matrix rotors, namely, {specify goods, e.g., structural parts of air filtering installations, structural parts of dehumidifiers, etc.}; {specify type, e.g., replacement, structural} parts and {specify type, e.g., replacement, structural} fittings for all the aforesaid goods
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 should note the following additional requirements.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 011; and applicant needs a specimen for class 007. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) 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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Sarah E. Kunkleman/
Trademark Examining Attorney
Law Office 105
571-272-6151
sarah.kunkleman@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.