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 08, 2019

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on July 23, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues additional identification of goods requirements.  See TMEP §§706, 711.02. 

 

In a previous Office action dated July 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods.

 

Based on applicant’s response, the following refusal has been withdrawn:  Section 2(d) refusal.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Identification of Goods Requirement

 

Applicant must respond to all issues raised in this Office action and the previous July 23, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

IDENTIFICATION OF GOODS

 

Applicant must clarify some of the wording in the identification of goods for International Class 9 because it is indefinite or overbroad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03.

 

The applicant insufficiently describes the following goods in Class 9:

• The wording “systems” throughout the identification is indefinite because it does not specify the components parts of the systems.
• The wording “biaxial seismic exciters”, “hydraulic control manifolds”, “high strength fasteners”, “hydraulic piping” is indefinite because it is not clear whether these goods are testers as classified in Class 9, and as defined by the pre-ambulatory language.  For example, the wording “high strength fasteners” could refer to high strength metal bolts in Class 6.
• The wording “structures and components of the foregoing” is overbroad and indefinite as this wording could refer to goods outside the specified class. Generally “structural parts thereof” or “replacements parts thereof” is acceptable when used with definite goods.

 

Applicant may substitute the following wording, if accurate:

 

Class 9: Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, and structural parts thereof, namely, data acquisition systems compromised of {indicate component parts}, vibration test systems compromised of {indicate component parts}, wheel impact testers, eccentric mass wheel testers, steering assembly test stands, bearing endurance test machines, biaxial seismic exciters being {indicate purpose} testers, ball joint boot test machines, seat vibration testers, brake compressibility testing machines, spinning rotary actuator testers, fatigue rated rotary actuator testers, rotary actuator testers, hydrostatic bearing actuator testers, fatigue rated actuator testers, linear servo-rated actuator testers, hose testing machines, structural load frame testers, fatigue rated ball joints testers, fatigue rated hydrostatic bearing actuator testers, steering pump test systems compromised of {indicate component parts}, electric steering durability system testers, alternator and starter testers, electric steering performance system testers, exhaust corrosion fatigue testers, hydraulic power steering test stands, table top load frame testers, cross port bleed valve testers, spiral washer testers, differential pressure transducer testers, fatigue rated swivel joint testers, hydraulic control manifolds being {indicate purpose} testers, high strength fasteners being {indicate purpose} testers, hydraulic power supplies being {indicate purpose} testers, hub and wheel bearing testers, brake shim testing stands, radial fatigue machines being {indicate purpose} testers, biaxial wheel testers, rotary fatigue machine testers, brake dynamometers, high speed rail dynamometers, master cylinder test stands, vehicle disc thickness variation and drag testers, rotor mapping station testers, residual drag and rotor thickness variation machine testers, shear test machines, booster test stands, torque flex durability machine testers, low pressure rotor wear test machines, aircraft sub-scale dynamometers, automotive sub-scale dynamometers, chase friction material test systems compromised of {indicate component parts}, friction standard dynamometers, tire-coupled aircraft dynamometers, aircraft roll dynamometers, electric vehicle motor and driveline stand testers, manual clutch durability test machines, automatic transmission high speed test systems compromised of {indicate component parts}, transmission torque cycling durability machine testers, driveline test systems compromised of {indicate component parts}, chassis dynamometers, brake dynamometers, roller brake testers, mobile brake testers, mobile air system expert testers, spring testers, wet friction test stands, wet friction test machines, digital squareness-under-load unit testers, friction assessment and screening test machines, starter motor test stands, display module testers, automotive brake performance dynamometers, hydraulic piping being {indicate purpose} testers, road load simulation system testers, automotive inertia brake dynamometers, brake functionality test stands, and replacement parts for the foregoing

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See 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.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 08, 2019 for

U.S. Trademark Application Serial No. 88418729

 

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. 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 08, 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.”