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:  September 03, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

·       Prior-Filed Applications

·       Identification of Goods and Services

·       Significance Inquiry

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 79261819 and 87858957 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified because it could include goods and/or services in other international classes.  See TMEP §1402.01.  Notations concerning unacceptable wording are specified in the suggestion below.

 

For example, applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose and its intended uses. See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following wording, if accurate:  

 

International Class 009: Scientific apparatus and instruments, NAMELY, ________{specify type, e.g., electrical controlling devices} for use in cargo and load handling solutions; recorded computer software FOR ______{specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; microprocessors for use in control operating systems, automatic control operating systems and automatic control systems for vehicles; computer hardware and RECORDED software system for real time monitoring, trouble shooting and data collecting, storing and handling for use in machines and apparatus for lifting, loading, unloading and freighting purposes; computer hardware and RECORDED computer software systems for use in machines, devices and vehicles for CONTROLLING lifting, loading and unloading purposes; electronic monitoring devices, NAMELY, ________{specify common commercial name} for loading and lifting cranes, lifts and hoists; monitoring control apparatus, NAMELY, WIRELESS CONTROLLERS TO MONITOR AND CONTROL THE FUNCTIONING OF OTHER ELECTRONIC DEVICES for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land vehicles; ________{specify type only, e.g., computer} monitors; Measuring, detecting and monitoring instruments, indicators and controllers, NAMELY, _____{specify type, e.g., speedometers} for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land vehicles; remote monitoring apparatus, NAMELY, ________{specify common commercial name} for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land vehicles; electronic control systems for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land VEHICLE ENGINES vehicles; microprocessors for use in control operating systems, automatic control operating systems and automatic control systems for vehicles {delete duplicate}; computer hardware and computer software systems for use in machines, devices and vehicles for lifting, loading and unloading purposes; {delete duplicate} electronic monitoring devices for loading and lifting cranes, lifts and hoists; {delete duplicate} CLOUD NETWORK SERVERS cloud-server; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE cloud network monitoring software; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE computer programs for connecting remotely to computers or computer networks; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE computer software for wireless content delivery; ELECTRONIC databases IN THE FIELD OF _____{indicate subject matter, e.g., fleet management} RECORDED ON COMPUTER MEDIA; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE computer software for database management; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE application software FOR ______{specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; computer software applications, downloadable FOR ______{specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE CLOUD-COMPUTING application software for ______{specify the function of the software, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform} cloud computing services; downloadable SOFTWARE applications for use with mobile devices FOR ______{specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; ELECTRONIC remote controlS apparatus (Electronic -) for use in machines and apparatus for lifting, loading, unloading and freighting purposes and REMOTE CONTROL STARTERS FOR land vehicles; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, NAMELY, _____{indicate type of devices or systems, e.g., remote metering systems, gas and liquid cylinders, vehicle tracking devices, energy and utility systems, security systems, lighting systems} for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land vehicles; {As of January 1, 2019, computer software must be specified as “downloadable” and/or “recordable} DOWNLOADABLE computer software for creating searchable databases of information and data; wireless transmitters and receivers

 

International Class 037: Maintenance services, NAMELY, MAINTENANCE OF _____{indicate specific systems, installations or components, e.g., loading-unloading machines}; repair, installation and maintenance of land vehicles ____{indicate specific area or item of land vehicle, e.g., engines}, cranes, hoists, power-operated lifts and loaders for load handling, log stackers, reach stackers, harvesters, forklifts, all for lifting, loading and unloading purposes, vehicles incorporating lifting, loading and unloading apparatus, hoists and cranes; repair, _____{clarify type of installation in International Class 037, e.g., computer hardware} installation and maintenance of forklift trucks, trucks and tractors with mounted winches, hoists and cranes, log stackers; repair, installation and maintenance of microprocessors, automatic control operating systems, automatic control and diagnostic systems, ultrasonic testing apparatus, weighing apparatus and instruments, instruments for measuring length, weight and capacity, calculators for use in determining length, weight and capacity, pressure sensors, emergency signal transmitters for use in machines and apparatus for lifting, loading, unloading and freighting purposes and land vehicles, EXCLUDING REPAIR, INSTALLATION AND MAINTENANCE OF SOFTWARE; repair, installation and maintenance of scientific apparatus and instruments, NAMELY, ________{specify type in International Class0 37} for use in machines and devices for lifting, loading and unloading purposes and land vehicles; repair, installation and maintenance of computer hardware systems for real time monitoring, trouble shooting and data collecting, AND REPAIR, INSTALLATION AND MAINTENANCE OF computer hardware for use in machines and devices for lifting, loading and unloading purposes and land vehicles; information and consultancy services IN THE FIELD OF relating to vehicle repair

 

International Class 038: Wireless electronic transmission of data; wireless transfer of data BY TELECOMMUNICATIONS via the Internet; Wireless transfer of data BY TELECOMMUNICATIONS via digital mobile telephony; providing access to computer databases; telecommunications services for providing access to computer databases

 

International Class 042: Scientific and technological services, NAMELY, {specify type of services, e.g., scientific research, analysis, testing} and research and design relating thereto ALL IN THE FIELD OF _____{indicate subject matter, e.g., unloading cargo}; industrial analysis and research services IN THE FIELD OF _____{indicate subject matter, e.g., unloading cargo}; design and development of computer hardware and software; scientific and technological development, improvement, analysis, expertise, know-how, consultancy, advice, information, supplying and assistance services, namely, engineering consulting and scientific and technological expert _____{specify type of consulting, e.g., engineering} consulting relating to machines and devices for lifting, loading and unloading purposes and land vehicles; _____{specify type of research, e.g., Scientific} research and engineering design for others relating to science and technology; industrial analysis and research services; {delete duplicate} design and development of computer hardware and software for use in machines and devices for lifting, loading and unloading purposes and land vehicles; repair, installation and maintenance services for computer software; repair, installation and maintenance services for computer software for use in machines and devices for lifting, loading and unloading purposes and land vehicles; Design and development of computer software; Software as a Service (SaaS) SERVICES FEATURING SOFTWARE FOR ______{specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use} hosted in the cloud; maintenance, consulting and technical support services IN THE NATURE OF _______{specify, e.g., troubleshooting of computer software problems} IN THE FIELD OF relating to software as a service (SaaS); advice and consultancy in relation to computer networking applications, NAMELY, ________{specify type, e.g., consulting services in the field of hosting computer software networking applications}; development and maintenance of computer database software; application service provider services, NAMELY, ________{specify type, e.g., hosting computer software applications of others}; providing temporary use of web-based SOFTWARE applications FOR ______{specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; database development services

 

Additions Not Allowed: Applicant’s goods and/or services 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).

 

On-line Acceptable Identification of Goods and Services Manual Information: 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.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

Explain whether the wording in the mark “HICONNECT” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

RESPONSE GUIDELINES

 

Response guidelines.  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.

 

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  

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 September 03, 2019 for

U.S. Trademark Application Serial No. 88462313

 

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. 

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 September 03, 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.”