Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 08, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 11, 2020.

 

In a previous Office action(s) dated February 11, 2020, applicant was required to satisfy the following requirement(s): amend the identification of goods and multiple class application requirement.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been partially satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

In addition, the following requirement has been withdrawn: multiple class application requirement due to definite amended identification of goods provided.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUE(S) MADE FINAL that applicant must address:

• Requirement – Amend Identification of Goods

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “and rod ends for use in industrial machines, namely, mining, sawmills, and pulp and paper machinery.”

 

However, the proposed amendment identifies the following goods:  “machine parts, namely, bearing rod ends for use in industrial machines and machinery.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because it removes the specific types of machinery making the identification of goods broader in scope than the original identification of goods.

 

The wording “machine parts, namely, plummer blocks for bearings, bearing stabilizing rings, seal rings for bearings” in the identification of goods is indefinite and must be clarified because the wording does not completely indicate the material composition of the seal rings nor their use.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “machine parts, namely, plummer blocks for bearings, bearing stabilizing rings, metal seal rings for use with {indicate general types of machines, e.g., turbomachinery and centrifuges, etc.}.”

 

The wording “seals for bearings” in the identification of goods is indefinite and must be clarified because the wording does not indicate the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “machine parts, namely, seals for bearings.”

 

Applicant may substitute the following wording, if accurate: 

 

Class 7: Machine parts, namely, ball bearings, double row ball bearings, cylindrical roller bearings, spherical thrust bearings, roller bearings, ball bearing inserts, spherical bearings, plain spherical bearings, ball bearing adapters, self-aligning ball bearings, thrust ball bearings, angular contact ball bearings, needle bearings, thrust needle bearings, thrust roller bearings, tapered roller bearings, journal bearings, linear bearings, linear shafting for ball bearings, magneto ball bearings, mounted ball bearings, mounted roller bearings, and all other types of anti-friction bearings, namely, stud type cam follower bearings, yoke type cam follower bearings, single row ball bearings, cartridge ball bearings, deep groove ball bearings, insert ball bearings, mast guide ball bearings, unground ball bearings, ball and needle combination bearings, ball and roller combination bearings, needle and roller combination bearings, flange ball bearings, plain flange bearings, roller flange bearings, hanger ball bearings, plain hanger bearings, roller hanger bearings, linear ball bearings, plain linear bearings, rail linear bearings, roller linear bearings, shafting linear bearings, rod end plain bearings, insert roller bearings, needle roller bearings, spherical roller bearings, slewing ring ball bearings, slewing ring roller bearings, take-up ball bearings, take-up frame bearings, plain take-up bearings, take-up roller bearings, pillow blocks ball bearings, plain pillow blocks bearings, pillow blocks roller bearings; machine parts, namely, bearing rod ends for use in industrial machines, namely, mining, sawmills, and pulp and paper machinery and machinery; machine parts, namely, pillow blocks and flange blocks; machine parts, namely, bearing adapter mounting sleeves, bearing removal sleeves; machine parts, namely, plummer blocks for bearings, bearing stabilizing rings, metal seal rings for use with {indicate general types of machines, e.g., sorting machines, etc.}; machine parts, namely, seals for bearings; mechanical seals, namely, lip seals; keyless bushings, QD bushings, taper lock bushings for use as parts of machines; roller chain being parts of machines; chain couplings, coupling elements, geared couplings, coupling hubs, jaw couplings, rigid couplings, all for machines; lip seals as machine components; machine parts, namely, plain bore sheaves, QD sheaves, taper lock sheaves, variable pitch sheaves; machinery timing components, namely, plain bore sprockets, QD sprockets, taper lock sprockets

 

.Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See 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.  See TMEP §1402.04.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Christina Calloway

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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 October 08, 2020 for

U.S. Trademark Application Serial No. 88680755

 

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. 

 

 

Christina Calloway

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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 October 08, 2020, 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.”