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:  November 21, 2019

 

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 November 15, 2019, the examining attorney and Adrienne L. White 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.

 

SUMMARY OF ISSUES:

• Identification of Goods
• Amended Description of Mark Required
• Complete Copy of Foreign Registration Required

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and/or overbroad and must be clarified to further specify the nature or use of certain entries, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

The identification of goods also contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

The International Classification of some of applicant’s goods, particularly parts for machines and/or for vehicles, depends on the nature of the specified goods. Specifically, parts for machines and engines, including for vehicles, are within Class 007; parts for transmissions for land vehicles are in Class 012; and parts for transmissions, other than transmissions for vehicles, are in Class 007.  

 

Finally, some of the goods listed within certain entries are duplicated. Their deletion is suggested below in strikethroughs.

 

Applicant may adopt the following wording, if accurate. Suggested changes are in bold and deletions are in strikethroughs:

 

CLASS 007:    Components for machines and machine parts, including namely, drive belts, machine belts, power transmission belts, V-belts, twin V-belts, V-ribbed belts, poly V-belts, variable speed belts, twin V-ribbed belts, toothed belts, synchronous belts, cam belts, double-sided toothed belts, flat belts, multi-groove belts, coupling belts, link belts, conveyor belts, cams for belts, pulleys, V-belt pulleys, toothed-belt pulleys, V-ribbed belt pulleys; components for machines and machine parts, including namely, bushings, clamping elements, clamping plates, connectors, including in the nature of panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys; belts for machines in the nature of lifting belts; winding cutting machines; machine parts for transmissions for vehicles and apparatus for locomotion by air and/or water, except for land vehicles, including namely, drive belts, machine belts, power belts, V-belts, twin V-belts, V-ribbed belts, poly V-belts, variable speed belts, twin V-ribbed belts, toothed belts, synchronous belts, cam belts, double-sided toothed belts, flat belts, multi-groove belts, coupling belts, link belts, conveyor belts, cams for belts, pulleys, V-belt pulleys, toothed-belt pulleys, V-ribbed belt pulleys; machine parts for motors and engines for vehicles and apparatus for locomotion by air and/or water, including namely, bushings, clamping elements, clamping plates, connectors including in the nature of panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys, pulleys, bushings, clamping elements, clamping plates, cams for belts, hubs, sleeves, tension and deflection pulleys, connectors, including panel connectors, joint connectors; machine parts for motors and engines for vehicles and apparatus for locomotion by land, including namely, bushings, clamping elements, clamping plates, connectors, including in the nature of panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys, pulleys, bushings, clamping elements, clamping plates, cams for belts, hubs, sleeves, tension and deflection pulleys, connectors, including panel connectors, joint connectors; parts for gear boxes for vehicles and apparatus for locomotion by air and/or water, except for land vehicles, namely, bushings, clamping elements, clamping plates, connectors, including panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys, pulleys, bushings, clamping elements, clamping plates, cams for belts, hubs, sleeves, tension and deflection pulleys, connectors, including panel connectors, joint connectors

 

CLASS 012:    Parts for transmissions for land vehicles and apparatus for locomotion by land, including namely, drive belts, machine belts, power transmission belts, V-belts, twin V-belts, V-ribbed belts, poly V-belts, variable speed belts, twin V-ribbed belts, toothed belts, synchronous belts, cam belts, double-sided toothed belts, flat belts, multi-groove belts, coupling belts, link belts, conveyor belts, cams for belts, pulleys, V-belt pulleys, toothed-belt pulleys, V-ribbed belt pulleys; parts for gear boxes for land vehicles and apparatus for locomotion by land included in this class, including namely, bushings, clamping elements, clamping plates, connectors, including in the nature of panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys, pulleys, bushings, clamping elements, clamping plates, cams for belts, hubs, sleeves, tension and deflection pulleys, connectors, including panel connectors, joint connectors; parts for gear boxes for land vehicles and apparatus for locomotion by air and/or water, including namely, bushings, clamping elements, clamping plates, connectors, including in the nature of panel connectors, joint connectors, hubs, sleeves, tension and deflection pulleys, pulleys, bushings, clamping elements, clamping plates, cams for belts, hubs, sleeves, tension and deflection pulleys, connectors, including panel connectors, joint connectors; machine parts for transmissions for land vehicles, namely, drive belts, machine belts, power belts, V-belts, twin V-belts, V-ribbed belts, poly V-belts, variable speed belts, twin V-ribbed belts, toothed belts, synchronous belts, cam belts, double-sided toothed belts, flat belts, multi-groove belts, coupling belts, link belts, conveyor belts, cams for belts, pulleys, V-belt pulleys, toothed-belt pulleys, V-ribbed belt pulleys

 

CLASS 017:    Raw or semi-worked rubber, gutta-percha, raw or semi-worked gum, mica, including all of the aforesaid goods being synthetic, and goods, composite materials and elastomeric polymers made from all of the aforesaid goods in the form of insulating panels, foils, blocks, balls, threads not for use in textiles, granulates, chips, solutions, profiles, insulating shaped parts, sign blanks, powders; parts and fittings for all the aforesaid goods, included in class 17

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 or add goods not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Applicant must submit an amended statement describing all the literal and design elements in the mark.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate: 

 

The mark consists of a drawing of an upside down isosceles trapezoid in a blue gradient with white outlines that appears three dimensional. Centered on the front face of the blue trapezoid, the word "OPTIBELT" in white against the blue trapezoid, dissecting a red upside down isosceles trapezoid with white outlines and five white dots parallel to the upper base line. The color white in the background represents transparent areas and is not claimed as a feature of the mark.

 

COMPLETE COPY OF FOREIGN REGISTRATION REQUIRED

 

The preliminary amendment filed on October 30, 2019 specifies a basis under Trademark Act Section 44(e); however, it does not include a complete copy of a foreign registration. Specifically, the page that lists the owner of the registration appears to be missing.

 

Therefore, applicant must provide a complete copy of the foreign registration to support the amendment filed on October 30, 2019 to add the Section 44(e) basis.

 

 

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. 

 

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

 

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.  

 

         

/Faith Beaudry-Torres/

Faith Beaudry-Torres

Law Office 126

(571) 270-3044

faith.beaudry-torres@uspto.gov

 

 

 

 

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 November 21, 2019 for

U.S. Trademark Application Serial No. 88574720

 

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. 

 

 

         

/Faith Beaudry-Torres/

Faith Beaudry-Torres

Law Office 126

(571) 270-3044

faith.beaudry-torres@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 21, 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.”