Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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 27, 2019

 

 

 

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.  

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On September 26, 2019, the examining attorney and Maureen Smith discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

PARTIAL Identification of Goods and/or Services Amendment Requirement

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141(f); 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods and/or services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

The wording “fire sprinkler systems” in the identification of goods and/or services is indefinite and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  As stated, they include a water supply system, in addition to fire sprinklers; however, “sprinkler systems for fire protection” fit in Class 9.  Please see non-exhaustive suggestions below.

 

The current identification reads as follows:

 

            International Class: 9 Automatically operated valves; automatic pneumatic and electrical valves; automatic fire protection valves; automatic control valves and shutoff valves all for regulating the flow of gases and liquids; flow switches for monitoring and controlling the flow of gases and liquids; pressure switches and sensors for monitoring, controlling and switching hydraulic or pneumatic systems; fire sprinklers; fire sprinkler assemblies; fire sprinkler systems, fire detection and extinguishment apparatus and control systems comprised of heat, smoke and flame detectors and sensors, automatic valves, electrical switches, fire alarms and fire sprinklers

 

The following wording in the current identification is acceptable, because it is sufficiently definite and properly classified:

 

            International Class: 9 Automatically operated valves; automatic pneumatic and electrical valves; automatic fire protection valves; automatic control valves and shutoff valves all for regulating the flow of gases and liquids; flow switches for monitoring and controlling the flow of gases and liquids; pressure switches and sensors for monitoring, controlling and switching hydraulic or pneumatic systems; fire sprinklers; fire sprinkler assemblies; . . . , fire detection and extinguishment apparatus and control systems comprised of heat, smoke and flame detectors and sensors, automatic valves, electrical switches, fire alarms and fire sprinklers

 

Applicant may adopt the following identification of goods and/or services, if accurate:

 

            International Class: 9 Automatically operated valves; automatic pneumatic and electrical valves; automatic fire protection valves; automatic control valves and shutoff valves all for regulating the flow of gases and liquids; flow switches for monitoring and controlling the flow of gases and liquids; pressure switches and sensors for monitoring, controlling and switching hydraulic or pneumatic systems; fire sprinklers; fire sprinkler assemblies; sprinkler systems for fire protection, fire detection and extinguishment apparatus and control systems comprised of heat, smoke and flame detectors and sensors, automatic valves, electrical switches, fire alarms and fire sprinklers

 

See TMEP §1402.01.

 

            Amendment Guidelines

 

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).

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

(1)  Deleting the goods and/or services to which the refusal pertains;

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

(3)  Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).

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:  fire sprinkler systems.  The application will then proceed with the following goods only:  Automatically operated valves; automatic pneumatic and electrical valves; automatic fire protection valves; automatic control valves and shutoff valves all for regulating the flow of gases and liquids; flow switches for monitoring and controlling the flow of gases and liquids; pressure switches and sensors for monitoring, controlling and switching hydraulic or pneumatic systems; fire sprinklers; fire sprinkler assemblies; fire detection and extinguishment apparatus and control systems comprised of heat, smoke and flame detectors and sensors, automatic valves, electrical switches, fire alarms and fire sprinklers.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

 

/Tina H. Mai/

Trademark Examining Attorney

Law Office 117

571-272-4110

tina.mai@uspto.gov (for informal communications)

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 27, 2019 for

U.S. Trademark Application Serial No. 88507579

 

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. 

 

 

/Tina H. Mai/

Trademark Examining Attorney

Law Office 117

571-272-4110

tina.mai@uspto.gov (for informal communications)

 

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 27, 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.”