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 23, 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.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS

 

• Identification and classification of goods requirements

 

• Multiple class application requirements

 

• Foreign registration requirements

 

SEARCH OF OFFICE RECORDS – NO CONFLICTING MARKS NOTED

 

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).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition some of the goods may have been misclassified. The applicant must amend the application to properly classify the goods and either limit the application to goods falling in a single class or add classes to the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The following specific issues must be resolved:

 

* The applicant must specify the use of the “motorised lifting machines for industrial use.”

 

* The applicant must specify the use of the “motorised lifting apparatus for industrial use.”

 

* The applicant must clarify the form and use of the “hydraulic lifting attachments for industrial use.”

 

* The applicant must clarify the form and use of the “apparatus for lifting for industrial use.” Note that lifting equipment that is not a machine in nature would be classified in International Class 6

 

* The applicant must clarify the use and specify the type of actuator in the wording “parts and accessories for motorised lifting machines, namely, actuators and actuating handles for such apparatus adapted to grab hold of the goods to be lifted.”

 

* The applicant must specify that the conveyors in the wording “rolling stock for funicular railways, namely, railed lifting conveyors” are machines.

 

* The wording “robotic mechanisms for lifting in industrial use” is indefinite. The applicant must specify the type of mechanism.

 

* The applicant must clarify the form of the “machines, namely screw pulley blocks.”

 

* The applicant must clarify the form of the pulley block in the wording “screw pully blocks being parts of machines.” The applicant must also correct the spelling of the term “pulley”.

 

* The applicant must clarify the form and use of the “lifting tackle machines.”

 

* The applicant must clarify the that the “lifting tables” are machines and clarify the use of the goods.

 

* The applicant must clarify the form and use of the “lifting ramps.” The applicant must also clarify that the goods are powered or are machines.

 

* The applicant must specify the area of use for the “remotely controlled lifting machines for industrial use.”

 

* The applicant must specify the use of the “hydraulic lifting gear namely manipulator arms and control handles.”

 

* The applicant must specify the use of the “lifting machines for handling loads for industrial use.”

 

* The wording “load carry and lifting machines, for heavy lifting, and the movement and transfer in bulk” is indefinite. The applicant must specify the form of the “carry” machines and clarify the use of the goods.

 

 

* The wording “load carrying and lifting machines, for the transport of goods” is indefinite. The applicant must specify the form of the “carrying” machines.

 

* The applicant must specify the use of the “pneumatic lifting apparatus being machines.”

 

* The applicant must clarify the “mechanical and pneumatic hoisting apparatus” and may simply amend “hoisting apparatus” to “hoists,” if accurate.

 

* The applicant must specify the use of the “lifting installations for use in industry.”

 

* The applicant must clarify the nature or form of the “lifting attachments incorporating mechanisms for the handling of goods.”

 

* The applicant must list the individual attachments in the wording “attachments for cranes.”

 

* The applicant must specify that the “lifting tongs for cranes” are intended as attachments or replacement parts.

 

* The applicant must specify that the “grippers for cranes” are intended as attachments or replacement parts.

 

* The applicant must clarify the use of the “machine cocks.”

 

* The applicant must specify the use of the “grabs being parts of machines.”

 

* The wording “universal load transfer units” is indefinite. The applicant must specify the form and use of the goods.

 

* The applicant must specify the use of the “hydraulic industrial process controllers.”

 

* The wording “robotic arms for industrial purposes” is no longer acceptable. The applicant must describe the goods and their use.

 

* The applicant must specify the form and use of the “stacker crane arms.”

 

* The nature of the “effectors” in the wording “hydraulic tools, namely, pneumatic, magnetic, mechanical or vacuum powered end effectors” is unclear. The applicant must describe the nature and use of the goods in order to determine proper classification.

 

* The applicant must specify the form in which the “hydraulically operated switches” are sold, e.g., “as parts of machines.”

 

* The applicant must specify whether the “hydraulic actuators” are “linear” or “valve” actuators.

 

Applicant may adopt the following identification, if accurate: 

 

“motorised lifting machines for industrial use for use in _____________ [specify use, e.g., ‘the transport of goods’]; motorised lifting apparatus for industrial use for use in _____________ [specify use, e.g., ‘the transport of goods’]; hydraulic lifting attachments for industrial use, namely, hydraulic ___________ [specify goods to which the attachments are attached, e.g., ‘crane’] attachments in the form of ______________ [specify individual attachments]; apparatus for lifting for industrial use, namely, _____________ [list individual goods, e.g., ‘lifting jacks other than hand-operated’]; parts and accessories for motorised lifting machines, namely, _________ [specify type of actuator, e.g., ‘hydraulic linear’] actuators adapted to grab hold of the goods to be lifted and actuating handles for such apparatus; rolling stock for funicular railways, namely, railed lifting conveyor machines; robotic ___________ [specify form of mechanism, e.g., ‘exoskeleton suits being machines’] for lifting goods for industrial use; elevating work platforms; machines, namely screw pulley blocks being ___________ [describe goods]; machine parts in the nature of screw pulley blocks being _____________ [describe goods]; lifting and hoisting equipment, namely elevators and escalators; hydraulic lift tables; electric pulley blocks; lifting tackle machines, namely, __________ [describe goods]; pulleys, namely, hoist with pulleys; machines being lifting tables for conveying goods; powered lifting ramps for conveying goods; remotely controlled lifting machines for industrial use for ______________ [specify use]; hydraulic lifting gear namely manipulator arms and control handles therefore for _________ [specify use, e.g., ‘for use as attachments to cranes’]; electric hoists; hydraulic hoists; mechanical hoists; lifting and hoisting apparatus, namely, cranes; lifting machines for handling in the nature of goods to be transported for industrial use; hoists; load lifting machines and carry machines in the nature of cranes, for heavy lifting of goods for transport, and for the movement and transfer of bulk goods; load lifting machines and carrying machines in the nature of cranes, for the transport of goods; pneumatic lifting apparatus being machines for the transport of goods; mechanical and pneumatic hoists; hydraulic lifts; lifting installations for use in industry for the transport of goods; lifting attachments for ____________ [specify type of machine with which the goods are intended to be used] in the nature of ____________ [specify type of attachment] incorporating _________________ [replace ‘mechanisms’ with wording identifying the form of the mechanism] for the handling of goods; lifting and hoisting apparatus, namely, cranes; self-propelled cranes; fixed cranes; attachments for cranes, namely, lifting tongs and grippers for use as attachments for cranes; taps being machine tools; machine cocks being __________ [describe goods, e.g., ‘valves for machines’]; taps being mechanically operated tools; grabs in the form of __________ [specify form, e.g., grapples and forks] being parts of lifting machines; machines for loading for industrial use; universal load transfer units, namely, ____________ [describe goods]; winching machines; loading cranes; hydraulic controllers for machines used in industrial processes; lifting and conveying machine attachments in the nature of robotic arms featuring the ability to grip, lift and move goods to be stored or transported; stacker crane arms being cranes for attachment to machines used in moving goods stored in stack form; elevating or lifting work platforms; fixed and mobile cranes; derricks; hydraulic tools, namely, pneumatic, magnetic, mechanical or vacuum powered end effectors, namely, attachments for goods transport machines being devices used in picking up goods to be moved; hydraulically operated switches as parts of machines; hydraulic linear and valve actuators; handles being parts of machine tools; handles being parts of mechanically operated tools; pneumatic hoists; hydraulic lifting ramps; electric lifting attachments being parts of machines; electric grippers being parts of machines,” in International Class 7.

 

Additions Not Allowed: 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).

 

Trademark ID Manual: 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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that may be classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the single class covered by the fee already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

QUESTIONS REGARDING THE INSTANT OFFICE ACTION

 

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  

 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@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 23, 2019 for

U.S. Trademark Application Serial No. 88491423

 

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. 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@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 23, 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.”