| To: | Caterpillar Inc. (docketing@finnegan.com) |
| Subject: | U.S. Trademark Application Serial No. 88683686 - CAT - 08407.1905 |
| Sent: | February 13, 2020 12:13:28 PM |
| Sent As: | ecom114@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88683686
Mark: CAT
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Correspondence Address: FINNEGAN, HENDERSON, FARABOW, GARRETT &
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Applicant: Caterpillar Inc.
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Reference/Docket No. 08407.1905
Correspondence Email Address: |
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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: February 13, 2020
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
SEARCH CONDUCTED
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).
ACCEPTABLE IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED
Applicant has elected to use wording in the identification of goods and/or services that is not found in the U.S. Acceptable Identification of Goods and Services Manual. The wording that applicant has chosen to use instead does not meet the standards set forth in the Manual and is unacceptable, resulting in the need for amendments. Specifically, the following underlined wording in the identification of goods and/or services is indefinite and must be clarified as set forth below. See TMEP §1402.01. The exact nature of the goods and/or services cannot be determined from this wording. The bolded wording is misclassified. The italicized wording is redundant and must be limited to a single occurrence as discussed further below.
Class 1
Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry [The type of chemicals for these industries are classified in multiple classes as noted in the ID Manual and must therefore be further specified, for example, “seed treatment chemicals for agricultural use except fungicides, herbicides, insecticides and parasiticides.”]; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides [Clarify type of substance as exemplified in the ID Manual, for instance, “Tanning agents for use in the manufacture of leather, namely, oils for preparing leather in the course of manufacture.”]; adhesives for use in industry; putties and other paste fillers [Clarify type of substance as exemplified in the ID Manual, for instance, “glaziers’ putty.”]; compost, manures, fertilizers; biological preparations for use in industry and science; Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and paraticides; adhesives used in industry; cement for repairs, namely, adhesive cement for bonding [Clarify type, which determines classification, for example, “Premixed adhesive foam cements for industrial purposes.”]; anti-freeze; coolants; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems [Clarify type as exemplified in the ID Manual, for example, “Radiator additives to prevent rust.”]; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems [Note that this is not the common commercial wording, compare “radiator flush,” for example and refer to the ID Manual for other examples.]; chemical preparations for locking screw threads; battery fluid, namely, acidulated water for recharging batteries; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins and diesel exhaust fluid
Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes [Clarify type, for example, “vat dyes.”]; inks for printing, marking and engraving [Clarify type, for instance, “marking ink for animals.”]; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art; Paints, varnishes, lacquers [Redundant. Must be limited to a single occurrence.]; preservatives against rust in the nature of a coating and against deterioration of wood; colorants; mordants used in the manufacturing of coatings [Clarify type and purpose using the common commercial name after consulting the ID Manual and the Register, for example “mordant dyes.”]; raw natural resins; primers, and paint thinners; metal preservatives in the nature of a coating; coatings in the form of paints for use in the manufacture of vehicles and on parts of vehicles; fireproof cement coatings
Class 4
Industrial oils and greases, wax; lubricants [Clarify type of substance as exemplified in the ID Manual, for instance, lubricants for industrial machinery.”] dust absorbing, wetting and binding compositions; fuels and illuminants [Clarify type, for instance, “fuel gas” or “motor fuel.”]; candles and wicks for lighting [Clarify type of substance as exemplified in the ID Manual, for instance, “candles and wicks for candles for lighting;”]; Industrial oils and greases; lubricants [Redundant. Limit to one occurrence.]; diesel oil; anti-seizure lubricating compounds for use on engines; lubricant designed for use in ball and roller bearings and bushings
Class 6
Common metals and their alloys, ores [Clarify type separately, for example, “Common metals and their alloys, unwrought or semi-wrought” and “metal ores.”]; metal materials for building and construction [Clarify type of substance as exemplified in the ID Manual, for instance, “Metal building materials, namely, ceiling boards and floor boards”]; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware [Clarify type of substance as exemplified in the ID Manual, for instance, “Small items of metal hardware, namely, high security locks and sheet metal plates primarily for the casino and gaming industry.”]; metal containers for storage or transport [Clarify type and purpose, for example, “containers of metal for storage and transport of goods.”]; safes; Common metals and their alloys [Redundant.]; metal building materials [Redundant.]; ores [Redundant.]; non-electric cables and wires of common metal; small items of metal hardware [Redundant. See previous comment.]; metal containers for storage or transport [Redundant. See previous comment.]; non-electric cables and wires of common metals; pipes and tubes of metal; metal plugs; metal sealing rings; metal seals [Clarify type of substance as exemplified in the ID Manual, for instance, “metal seals for {indicate type of pipe} pipe connections.”]; metal tie downs; metal bungs; metal caps for tubing ends; metal closures for containers; metal pipe collars; metal clamps; metal couplings for use with hoses; metal storage tanks; metal drain plugs; metal drawbar pins; metal locking pins; metal snap rings; metallic drain traps and drain caps; metal pipe extensions; metal debris deflectors [Clarify nature of the goods, for which common commercial wording could not be found.]; clad steel plates; metal track hardware, namely, track links, track shoes and track pins; metal chains; metal number plates; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts for land vehicles and machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty, metal hose clamps, and metal hose fittings; metal tool boxes; metal camshafts [Clarify type of substance as exemplified in the ID Manual, for instance, “engine camshafts of metal.”]; metal studs [Specify type, for example, “wire rope fittings of metal, namely, threaded studs.”]; metal rod ends; metal rods [Clarify type of substance as exemplified in the ID Manual, for instance, “metal welding rods.”]; metal rivets; metal pins [Clarify type of substance as exemplified in the ID Manual, for instance, “metal ball lock pins.”]; metal brackets [Clarify type, for instance, metal wall brackets.]; metal clamps; metal bolts; metal nuts; metal washers [Clarify type, for example, “metal hardware, namely, washers.”]; metal screws; metal fasteners [Clarify type, for instance, “metal threaded fasteners.”]; metal rings [Clarify type, for instance, “Screw rings of metal.”]; metal belts [Clarify type, for example, “Belts of metal for handling loads.”]; metal pulleys [Clarify type of substance as exemplified in the ID Manual, for instance, “metal window pulleys.”]; metal springs [Clarify type of substance as exemplified in the ID Manual, for instance, “metal hardware, namely, springs.”]; metal keys [Clarify type as noted in the ID Manual, for example, “Metal keys for locks.”]; metal Woodruff keys [See previous comment.]; metal clips [Clarify type of substance as exemplified in the ID Manual, for instance, metal cable clips.”]; common metal powders used in manufacturing; metals in foil or powder form for 3D printers
Class 9
Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity [The type of goods must be specified using the common commercial names, for example, “Electric voltage transformers.”]; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data [Clarify using the common name for the goods, for example, “Electronic data processing apparatus.”]; recorded and downloadable media, computer software, blank digital or analogue recording and storage media [Clarify type of substance as exemplified in the ID Manual, for instance, “downloadable educational media, namely, ___ {indicate form of goods, e.g., audio files, video recordings, multimedia files, etc.} featuring ___ {indicate subject matter or field}.”]; mechanisms for coin-operated apparatus; cash registers, calculating devices; [Clarify type of substance as exemplified in the ID Manual, for instance, “calculators.”] computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers [Clarify whether diving gloves.], breathing apparatus for underwater swimming; fire-extinguishing apparatus; Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity [The type of goods must be clearly specified as noted in the comments above.]; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data [Redundant, see previous comment for this entry.]; recorded and downloadable media, computer software, blank digital or analogue recording and storage media [Redundant, see previous comment for this entry.]; computers and computer peripheral devices; fire-extinguishing apparatus [Redundant, see previous comment for this entry.]; computer software [Clarify type and function as discussed below.]; electric wire, harnessing, [Clarify, for example, “Electric wire harnesses for automobiles.”] gauges [Clarify type, for instance, micrometer gauges.] and switches [“Electric switches” is acceptable.]; electronic displays [Clarify, for example, “Electronic displays, namely, digital signage.”]; electronic connectors [Clarify whether electric connectors as noted in the ID Manual.], terminals, [Clarify, for example, “Electronic payment terminal.”] and controls; [Clarify, for example, electrical controllers.] circuit breakers; fuses; leveling rods; reflective mirrors to prevent accidents; power inverters; batteries; electrical parts and fittings for land vehicles, machinery, and equipment, namely, amplifiers for wireless communications, antennas, and batteries; electric relays; control mechanisms for machines, engines, or motors [Clarify using the common commercial name such as those listed in the ID Manual, for example, “Mechanical remote controls for motors.”]; fuel/air ratio controls for engines [See previous comment. Clarify without the use of a slash, which is impermissibly vague.]; speed governors for machines, engines, and motors; radios; antennas; electric cables; converters [Specify type, for instance, analogue to digital converters.]; speakers [Redundant.]; glasses [Specify type, for instance, ski glasses.]; eyeglasses; sunglasses; mobile phone [Clarify whether mobile phones.] and tablets [Clarify whether tablet computers.]; Solar panels for the production of electricity; drones [Misclassified. See Class 12 and the ID Manual.]
Class 11
Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes [Clarify type using the common commercial names such as those provided in the ID Manual, for example, “electric lighting fixtures and HVAC units.]; Light lenses [See previous comment.]; machine head lights [See previous comment.]; interior lights [See previous comment.]; machine work lights [Clarify, for example, “LED flood lights and LED work lights for construction settings.”]; light, machine and lamp; light bulbs; head light bulbs; tail light bulbs; vehicle turn signal light bulbs; dashboard light bulbs; electric torches for lighting; lights for vehicles and lamps; reflectors for vehicles; air conditioning apparatus; air conditioning filters; defrosting apparatus for vehicles; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machinery, and earth moving machinery, namely, backup lights for land vehicles; coolant recovery systems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs; LED light bulbs; rear lights for vehicles; valves as part of radiators
Class 17
Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials [Specify type for each as exemplified in the ID Manual, for example, semi-worked rubber and padding materials of rubber.]; plastics and resins in extruded form for use in manufacture [Clarify nature, which determines the correct classification as noted in the ID Manual, for example, “Semi-worked synthetic plastic and synthetic resins as semi-finished products in form of pellets, rods, foils, foams, fibers, films and sheets];
packing, stopping and insulating materials [clarify type, for example, Packaging materials, namely, plastic shipping and storage boxes]; flexible pipes, tubes and hoses, not of metal [Clarify each, for example, “Flexible plastic pipes for plumbing purposes.”]; Flexible pipes, tubes, fittings, hoses, seals, junctions, and rings not of metal [See previous comment.]; non-metal seals for use on pipe joints and flanges; semi-processed brake lining material; clutch linings; non-metal gaskets for commercial and industrial applications; insulating gloves; rings of rubber or of plastic for use as pipe connection seals; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machines, and earth moving machines, namely, connecting hoses for vehicle radiators; absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids; non-medical adhesive strips [Clarify type as exemplified in the ID Manual, for instance, “Adhesive strips for placement on furniture and in potted plants to deter cats from scratching on furniture or digging in potted plants.”]; snubber seals [Clarify using the common commercial name, for example, “O-rings being machine parts for {indicate general types of machines, e.g., sorting machines, packaging machines, etc.}.”]; cylinder seals [Clarify using the common name, for example, “Cylinder joinings.”]; piston wear rings [Clarify whether piston rings.]; insulation used for sound suppress and HVAC [Clarify, for example, “Bark coverings for sound insulation.”]
Class 25
Clothing, footwear, headwear; Apparel, footwear and headwear, namely, work, sport, dress, casual, children, and infant clothing in the nature of shirts, sweaters, pullovers, jackets, pants, shorts, parkas, vests, and rainwear; headwear [Redundant.]; caps being headwear; hats; visors being headwear; knit hats; sun hats; uniforms; one piece jumpsuits; shirts; t-shirts; golf shirts; dress shirts; sport shirts; polo shirts; collared shirts; night shirts; sweatshirts; wind shirts; sweaters; pullovers; jumpers; fleece pullovers; pants; dress pants; sport pants; casual pants; jeans; lounge pants; sleep pants; sweatpants; wind pants; shorts; jackets; fleece jackets; parkas; vests; rainwear; bathing suits; underwear; gloves; ski gloves; mittens; socks; sock liners [Clarify whether shoe liners.]; footwear, namely, shoes, casual shoes; sandals, boots, work boots, sport shoes, hiking shoes, hiking boots; insoles for shoes and boots; belts; leather belts; fabric belts; ties; scarves; bandanas; wrist bands as clothing; bibs not of paper
Class 28
Games, toys and playthings [Specify type as noted in the ID Manual.]; video game apparatus [Clarify whether video game machines as noted in the ID Manual.]; gymnastic and sporting articles [Specify type.]; decorations for Christmas trees; Toys and sporting goods [Specify type.]; toy vehicles and accessories therefor; balls for sports; golf tees, golf tee markers and tins [Clarify type of goods; note that tin cans, sold empty are classified in Class 6.]; golf divot repair tools; hand grips for golf clubs; golf clubs; golf putters; covers for golf clubs; bats for games; aerodynamic disk for use in playing catching games; cornhole game sets; cornhole bags; washer toss games [Specify type.]; scale model vehicles; scale model kits; toy models; construction site themed play sets [Specify whether toy construction sets as noted in the ID Manual.]; playground equipment including sand boxes [Specify type without the use of the impermissible wording “including.”]; baby gyms; swings; toy work tools; toy tool benches; radio controlled toy vehicles; remote-controlled toy vehicles; construction toys; ride-on toy vehicles; battery operated ride-on toys; puzzles; kites; role-playing games; board games; dart games; toy blocks; playing cards; balloons; toy cameras; plush toys; plush dice [Clarify whether dice games or an automobile accessory.]; Christmas ornaments [Clarify whether Christmas tree ornaments as noted in the ID Manual.]; rattles [Clarify whether baby rattles as noted in the ID Manual.]; dolls; toy figurines [Specify material, i.e., whether plastic.]; toys for pets; tricycles for infants [Clarify whether toys]; scooters [Clarify whether toys]; toy trains and parts and accessories therefore; train sets [Clarify whether toys]; toy cars; slot cars [Clarify whether toys]; slot car sets and parts and accessories therefore [Clarify whether toys and list the primary component(s) of the sets and specify the nature of the accessories.]; hand-held units for playing electronic games; protective padding for bicycles [Misclassified and indefinite. Safety pads for bicycles are classified in Class 12.], skateboards, and scooters [On 01-01-2016, this 01-17-2008 entry was deleted because it is indefinite under Nice 10-2016. The specific type of vehicle scooters should be indicated, e.g., mobility scooters, motor scooters, water scooters, or push scooters. Toy scooters are classified in Class 28.]; party favor hats; paper party favors; party favors in the nature of small toys or noise makers [Clarify the type without the use of the indefinite word “or.”]; fishing tackle; fishing lines; fishing lures; fishing tackle boxes; hunting game calls; and bird calls
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace the slash and the word “or” in the identification of goods, if appropriate, or rewrite the identification using definite and unambiguous language.
Applicant must amend this wording to specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name for the goods and/or services, then applicant must describe the nature of the goods and/or services as well as their main purpose, channels of trade, and the intended consumer(s). See TMEP §1402.01.
For assistance with identifying and classifying goods and/or 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.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).
Applicant may find acceptable identification wording by: 1) using the sample wording provided in the Identification Manual for this purpose; 2) researching the Register for wording that has recently been accepted by the Office and is consistent with the current rules governing identifications; 3) using wording that is the common name widely used in the relevant industry or trade; or 4) drafting wording that otherwise complies with the requirements described in the Code of Federal Regulations as exemplified by the entries in the Identification Manual.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 10 classes; however, applicant submitted a fee(s) sufficient for only 9 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
APPLICATION UNSIGNED - SIGNATURE REQUIRED
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
RESPONSE GUIDELINES
E-mail may not be used to file responses to Office actions. These documents may be filed electronically using TEAS. TMEP § 304.02. Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement.
Applicant may call or email the assigned trademark examining attorney to request additional explanation about the refusal(s) and/or requirement(s) in this Office action. However, the trademark examining attorney cannot provide legal advice or statements about applicant’s rights. 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.
/Edward Fennessy/
Attorney Advisor
Law Office 114
571-272-8804
Edward.Fennessy@USPTO.Gov
RESPONSE GUIDANCE