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:  December 03, 2019

 

This Office action is in response to applicant’s communication filed on October 22, 2019.

 

The requirement that the applicant adopt an acceptable identification of goods is maintained and continued. In addition, upon review of the applicant’s foreign registration and upon further review of the identification of goods, the following new issues must be addressed:

 

IDENTIFICATION OF GOODS – CLARIFICATION REQUIRED

 

The requirement that the applicant adopt an acceptable identification of goods is maintained and continued.

 

The identification of goods remains unacceptable as indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the following issues must be resolved. It is noted that some of the issues discussed below pertain to wording adopted per suggestions in the first Office action or were not raised in the first Office action and the examining attorney apologizes for confusion or inconvenience.

 

It is noted that, in response to the requirements set forth in the first Office action, the applicant argues that the goods “are available for use in any industry which requires that various types of goods be move from one location to another. The applicant's goods can be fixed to items such as manipulator arms, cranes, industrial track systems, etc. where the need for the lifting of heavy goods is required.” However, with limited exceptions, the applicant must either indicate the use of the goods or the form of the lifting and moving machines. Moreover, the nature of the goods as being those that are “fixed to [other] items” is not expressed in the identification of goods.

 

In addition, note that equipment that is adapted for a particular use may be classified in a class other than International Class 7. For example, “power-operated lifts specially adapted for vehicles for use with wheelchairs” would be classified in International Class 12. Accordingly, clarification is also required for purposes of ensuring proper classification.

 

Finally, note that “the purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods, applicant should describe the goods using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Accordingly, the following issues must be resolved:

 

The wording “motorised lifting machines for industrial use for use in industrial industries, such as building and construction, food and beverage, glass, windows, automotive and repair services which requiring heavy lifting for the movement of various goods or loads” is indefinite. The applicant must specify the form of the goods and replace the open ended wording “such as” with definite wording, e.g., “namely” or “particularly”.

 

The wording “motorised lifting apparatus for industrial use, namely,  for use in industrial industries requiring heavy such as building and construction, food and beverage, glass, windows, automotive and repair services which requiring heavy lifting for the movement of various goods or loads” is indefinite. The applicant must specify the form of the goods and replace the open ended wording “such as” with definite wording, e.g., “namely” or “particularly”.

 

The applicant must clarify the form of the “apparatus for lifting for industrial use, namely, control units, manipulator arms, rail lifting apparatus” in order to ensure proper classification. Note that electric controls are classified in International Class 9, however, a separate control unit would exceed the scope of the original identification of goods. In addition, if the goods are not machines, they will be classified by the form of the goods.

 

The applicant must clarify the form of the “parts and accessories for motorised lifting machines, namely, vacuum end effector, magnetic end effector, hooks, quick coupling, hydraulic linear, control unit actuators adapted to grab hold of the goods to be lifted and actuating handles for such apparatus.” Note that the amended wording must fall within the scope of the original wording which was limited to “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 wording “machines, namely, screw pulley blocks being used as part of lifting control unit” is indefinite because the form of the goods is unclear.

 

The wording “machine parts in the nature of screw pulley blocks being used as part of lifting control unit” is indefinite because the form of the goods is unclear.

 

The wording “lifting tackle machines, namely, lifting tackle machines, namely, hoists, winches, a system of ropes, ropes, pulley blocks, hooks for lifting heavy objects” is indefinite because some of the items are not machines. For example, the examining attorney refers to “a system of ropes, ropes, pulley blocks, hooks for lifting heavy objects.” Accordingly, the applicant must replace this wording with language referring to actual machinery. If tall of the wording following “namely” comprises a system of goods, then this must be clarified.

 

The word “remotely controlled lifting machines for industrial use for heavy lifiting” is indefinite. Initially it is noted that the wording “lifiting” at the end of the identification appears to encompass a typographical error. In addition, the applicant must indicate the area of use for the goods.

 

The wording “hydraulic lifting gear, namely, manipulator arms and control handles therefore for use as attachment to lifting machines for heavy lifts or cranes electric hoists” is indefinite. It appears a semi-colon was omitted before the wording “electric hoists”.

 

The wording “lifting machines for handling in the nature of goods to be transported for industrial use” appears to feature a typographical error. It is noted that this wording was adopted at the examining attorney’s suggestion. However, the applicant must clarify the form of the goods.

 

The wording “lifting attachments for handling in the nature of goods to be transported for industrial use incorporating cranes, control units, hooks and screw pulley blocks for the handling of goods” is indefinite. It is noted that this wording was recommended in the first Office action. However, the form and nature of the goods is unclear. Moreover, the wording “control units” does not appear to comprise a “lifting attachment”.

 

The applicant must clarify the nature of the “effectors” in the wording “grabs in the form of hooks, vacuum end effectors and magnetic end effectors, all being parts of lifting machines.”

 

The nature of the “travellators” in the wording “universal load transfer units, namely, movable travellators for transport of heavy goods” must be clarified.

 

The wording “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” is indefinite because there is an inconsistency between the wording preceding “namely” and wording following “namely.” For example, “pneumatic” tools would not be, by definition, “hydraulic” tools. Accordingly, the applicant must clarify the form of the goods. In addition, it is unclear whether the effectors themselves are “used in picking up goods to be moved” or if this wording describes the purposes of the “transport machines” as a whole.

 

Applicant may adopt the following identification, if accurate: 

 

“motorised lifting machines for industrial use, namely, ______________ [describe goods, e.g,. ‘cranes’] for use in transportation, manufacturing, vehicle repair, and construction industries requiring heavy lifting; motorised lifting apparatus for industrial use for use in industries, namely, _________________ [describe goods, e.g., ‘car lifts’] for use in transportation, manufacturing, vehicle repair, and construction industries requiring heavy lifting; hydraulic lifting attachments for industrial use, namely, hydraulic crane attachments in the form of grips; lifting machines for industrial use, namely, control units being ____________ [describe goods, amended wording must fall within scope of original identification], manipulator arms for lifting machines, lifting machines that move on rails for use in picking up goods; parts and accessories for motorised lifting machines, namely, quick coupling actuators and actuating handles in the form of hooks and vacuum and magnetic end effectors being devices that grab hold of goods to be lifted; rolling stock for funicular railways, namely, railed lifting conveyor machines; robotic lifting machines for lifting goods for industrial use; elevating work platforms; machines, namely, screw pulley blocks being used as part of lifting ___________ [replace ‘control unit’ with generic name for type of machine]; machine parts in the nature of screw pulley blocks being used as part of lifting ________________ [replace ‘control unit’ with generic name for type of machine]; lifting and hoisting equipment, namely, elevators and escalators; hydraulic lift tables; electric pulley blocks; lifting tackle machines comprised of hoists, winches, ropes, pulley blocks, and hooks, sold as a unit, for use in lifting heavy objects; pulleys, namely, hoist with pulleys; machines being lifting tables for conveying goods; powered lifting ramps for conveying goods; remotely controlled heavy lifting machines for lifting heavy loads of goods in the manufacturing and shipping industries; hydraulic lifting gear, namely, manipulator arms and control handles therefore for use as attachment to lifting machines for heavy lifts or cranes; electric hoists; hydraulic hoists; mechanical hoists; lifting and hoisting apparatus, namely, cranes; lifting machines for handling in the nature ___________________ [describe machines] for moving 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 incorporating mechanisms for the handling of goods, namely, cranes incorporating  hooks and screw pulley blocks; 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 valves for machines; grabs being part of lifting machines, namely, hooks and vacuum and magnetic end effectors being devices used in picking up goods; machines for loading for industrial use; universal load transfer units, namely, movable travellator style conveyors for transport of heavy 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; attachments for machines used in moving goods, namely, hydraulic, pneumatic, magnetic, mechanical or vacuum effectors being devices used in picking up goods to be moved; 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.

 

GOODS IN U.S. APPLICATION VS. FOREIGN REGISTRATION

 

Particular wording in the U.S. application’s identification of goods has been found to exceed the scope of goods in the foreign registration upon which the U.S. application relies.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods that are within the scope of the goods in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods as follows:  “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.” 

 

However, while the foreign registration encompasses hydraulic tools, the tools that are operated by means other than hydraulics are not included in this wording.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)       Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those goods in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:    

 

* “motorised lifting machines for industrial use for use in industrial industries, such as building and construction, food and beverage, glass, windows, automotive and repair services which requiring heavy lifting for the movement of various goods or loads;”

 

* “motorised lifting apparatus for industrial use, namely,  for use in industrial industries requiring heavy such as building and construction, food and beverage, glass, windows, automotive and repair services which requiring heavy lifting for the movement of various goods or loads;”

 

* “apparatus for lifting for industrial use, namely, control units, manipulator arms, rail lifting apparatus;”

 

* “parts and accessories for motorised lifting machines, namely, vacuum end effector, magnetic end effector, hooks, quick coupling, hydraulic linear, control unit actuators adapted to grab hold of the goods to be lifted and actuating handles for such apparatus;”

 

* “machines, namely, screw pulley blocks being used as part of lifting control unit;”

 

* “machine parts in the nature of screw pulley blocks being used as part of lifting control unit;”

 

* “lifting tackle machines, namely, lifting tackle machines, namely, hoists, winches, a system of ropes, ropes, pulley blocks, hooks for lifting heavy objects;”

 

* “remotely controlled lifting machines for industrial use for heavy lifiting;”

 

* “hydraulic lifting gear, namely, manipulator arms and control handles therefore for use as attachment to lifting machines for heavy lifts or cranes electric hoists;”

 

* “lifting machines for handling in the nature of goods to be transported for industrial use;”

 

* “lifting attachments for handling in the nature of goods to be transported for industrial use incorporating cranes, control units, hooks and screw pulley blocks for the handling of goods;”

 

* “grabs in the form of hooks, vacuum end effectors and magnetic end effectors, all being parts of lifting machines;”

 

* “universal load transfer units, namely, movable travellators for transport of heavy goods;”

 

* “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.”

 

The application will then proceed with the remaining goods only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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 December 03, 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 December 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.”