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:  August 01, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Partial Identification of Goods and Services Requirement – Classes 9, 37, and 42
• Foreign Registration Certificate Required

 

PARTIAL IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT – CLASSES 9, 37, AND 42

 

This partial requirement applies only to the goods and services specified herein in Classes 9, 37, and 42.

 

The identification for computer software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Several items in the wording in the identification of goods and/or services are indefinite and must be clarified because the nature of the goods and services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  In Class 9, the nature of the nature of what is being automated by the downloadable industrial automation software should be specified.  The nature of the “downloadable engineering software tools for the design, layout, improvement, and implementation of material handling systems and industrial automation systems” is unclear and it is suggested to refer to it as downloadable engineering software development tools …” for clarification.  In Class 42, the limiting language of “namely, software used in the field of product and process quality control” is not clearly worded and would more clearly clarify the field of the services if it were worded “all of the foregoing used in the field of product and process quality control.”

 

Some wording in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In Class 37, the Class 37 nature of the automated process control systems to be installed, maintained, and repaired should be specified, as this could encompass the Class 37 installation, maintenance, or repair of hardware or the Class 42 installation, maintenance, or repair of software as part of the automated process control systems.  In Class 42, the wording “technical support services, namely, troubleshooting in the nature of diagnosing and processing machine problems” is overbroad and could encompass Class 42 services relating to machine software problems or Class 37 services relating to machine equipment problems.  The “computer consultancy services” are indefinitely worded, and the nature of the computer consulting services should be clarified. 

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):

 

Class 7 is acceptable.

 

Class 9: {please specify the Class 9 format of the software, e.g., downloadable, recorded} computer software for use in management of a fleet of autonomous-navigating robotic vehicles; Downloadable software, namely, robotics control software; downloadable computer software to monitor and control factory manufacturing processes; downloadable industrial process control software; downloadable industrial automation software for automating {please indicate what is being automated, e.g., machines, lighting, HVAC, security, electrical power, networked robots, automated manufacturing equipment, industrial plant operations}; downloadable artificial intelligence software for use in simulating, modeling, designing, optimizing, operating and managing process manufacturing plants and industrial plant operations; downloadable software for connecting, operating, and managing networked robots, automated manufacturing equipment, and industrial plant operations; downloadable software for monitoring and controlling communication between computers and automated machine systems class; downloadable computer programs for modeling, simulating and emulating industrial automation systems; downloadable software for integrating automation systems emulation with imported models; downloadable engineering software development tools for the design, layout, improvement, and implementation of material handling systems and industrial automation systems; downloadable software for creating controls testing models for virtual prototyping of industrial machines; downloadable software for controlling robots using independent sensor data provided in real-time

 

Class 12 is acceptable.

 

Class 35 is acceptable.

 

Class 37: Installation, maintenance and repair of industrial robots, robotic arms for factory manufacturing and industrial purposes, computer hardware, and automated process control systems {please specify the nature of the automated process control systems, e.g., hardware}; technical support services, namely, troubleshooting in the nature of diagnosing and processing machine {please specify the nature of the what is being supported in Class 37, e.g., equipment} problems with commercial and industrial robots

 

Class 42: Industrial robotics, namely, design and development of industrial robots; Computer software development services; research and development in the field of robotics control software; providing temporary use of non-downloadable software for connecting, operating, and managing networked robots, automated manufacturing equipment, and industrial plant operations; providing temporary use of online non-downloadable software for monitoring the quality of manufacturing and service industry processes using statistical process control methods and quality control applications, namely, software all of the foregoing used in the field of product and process quality control; providing on-line non-downloadable software for monitoring the quality of manufacturing and service industry processes using statistical process control methods and quality control applications, namely, software all of the foregoing used in the field of product and process quality control; installation, updating, design, customization and maintenance of computer software for others; configuration management for computer hardware, peripherals and software, namely, computer network configuration services; technological consultation in the technology field of computer hardware systems and computer software systems; technical support services, namely, troubleshooting in the nature of diagnosing of computer hardware and computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing and processing machine {please specify the nature of the what is being supported in Class 42, e.g., software} problems with commercial and industrial robots; consulting services in the field of software for use in simulating, modeling, designing, optimizing, operating and managing process manufacturing plants; hosting of digital content on the Internet in the field of robotics control software; design and development of computer hardware and software;, computer programming, including development of software, for linking robot software to applications and manufacturing software; updating, leasing, maintenance of computer software; computer {please specify the nature of the computer consulting services, e.g., software, technology, programming, security} consultancy services; computer systems analysis services; {please specify the Class 42 format of the software, e.g., providing temporary use of on-line non-downloadable} computer software for use in management of a fleet of autonomous-navigating robotic vehicles; installation, maintenance and repair of automated process control systems {please specify the nature of the automated process control systems, e.g., software}

 

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.

 

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).  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 and/or services 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).

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 August 01, 2020 for

U.S. Trademark Application Serial No. 88899665

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 August 01, 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.”