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:  March 09, 2021

 

INTRODUCTION

 

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 OFFICE DATABASE- 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.

 

SUMMARY OF ISSUES:

• Amendment to the Identification of Goods and Services Required
• Multiple-Class Application Requirements

 

AMENDMENT TO THE IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Several entries in the identification of goods and/or services are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording must be clarified because it is not clear what the goods and/or services are and/or could identify goods and/or services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). 

 

Applicant must clarify the wording “robotic machines, namely, robotic cleaning and sanitizing equipment, including stationary cleaning equipment, portable cleaning equipment, onboard cleaning equipment, push cleaning equipment, riding cleaning equipment, and autonomous cleaning equipment, namely, cleaning equipment and customizable cleaning equipment for professional, commercial, industrial, institutional, including school campuses, municipal, hospitality, food service, food processing, retailer, including shopping malls, wholesaler, including warehouses, manufacturers, including factories, hospital, laboratory, agricultural, residential, transportation and hubs therefor, including airports, train stations, bus stations, ferry terminals, and marinas, and ports, construction, landscape, land-craft, aircraft, spacecraft, and watercraft uses, including cleaning apparatuses, floor cleaners, floor scrubbers, high-pressure cleaners, sweepers, such as push sweepers, suction sweepers, municipal pavement sweepers, floor polishers, dryers, such as floor dryers and scrubber dryers, snow removal machines, such as snow throwers, vacuum cleaners, such as wet vacuum cleaners, dry vacuum cleaners, wet and dry vacuum cleaners, shop vacuum cleaners, automotive vacuum cleaners, and residential vacuum cleaners, upright vacuum cleaners, canister vacuum cleaners, bag vacuum cleaners, bagless vacuum cleaners, lawn mowers, such as riding lawn mowers, single-disc machines, dry cleaning equipment, steam cleaning equipment, such as spray extraction cleaners, water treatment equipment, autonomous guidance control therefor, including software, firmware, hardware, as well as add-ons and plugin-ins therefor; sterilization features therefore, such as ultraviolet light features; pulsing features therefore, vibrational features therefor, such as ultrasonic features, transportation features therefor, filtration features therefor, artificial intelligence (AI) features therefor, such as machine learning features, sensing devices, guidance devices, performance tracking devices, and navigation devices therefor; cloud interfaces therefor; remote control features therefor; tracking, accounting, and billing features therefor; image recognition therefore; voice recognition therefor; data processing features therefor; control modules therefor; waste receptacles therefor; cleaning supplies and materials, namely, surfactants, detergents, abrasive cleaning materials, non-abrasive cleaning materials, detergent-free cleaning materials, disinfectant materials, coatings for repairing, protecting, and upgrading surfaces, parts, such as nozzles, spray heads, atomizers, aerosols, inlet couplers and adapters, outlet couplers and adapters, accessories, such as debris hoppers, tools, consumables, and dispensers therefor, and after-market parts, accessories, tools, consumables therefor; dosing devices therefor, filling devices therefor, propulsion systems therefor; diagnostic devices therefor; monitoring devices therefor; surveillance devices therefor; telepresence devices therefor; Internet-of-Things (IoT) devices therefor” in the identification of goods in International Class 7 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are. Specifically, this wording fails to specify the specific goods applicant is offering. Applicant must amend this wording to specify the common commercial or generic name of the goods.  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.

 

Further, this wording could identify goods in more than one international class.  For example, “vacuum cleaners” are in International Class 7, “water treatment equipment, namely, fertilizer injection units, namely, devices connected to a water distribution line, which automatically injects a predetermined proportion of fertilizer into an irrigation system used by a greenhouse complex” are in International Class 9, and “water treatment equipment, namely, water filtration units” are in International Class 11.  As such, applicant must clarify the identification of goods to properly identify the specific goods being offered.

 

Additionally, this wording includes the wording “such as”, which 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). 

 

Moreover, the identification includes various entries including the wording “therefor” in International Class 7. This wording is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  For example, “detergent soaps” are in International Class 3, and “disinfectants” are in International Class 5.  Applicant must either (1) specify the common commercial or generic name for each accessory item and properly classify the goods, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a). 

 

Applicant must also clarify the wording “electronic systems, apparatuses, and devices relating to robotic machines, namely, robotic cleaning and sanitizing equipment and surveillance equipment” in the identification of goods in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “cleaning robots being industrial robots” are in International Class 7 and “security surveillance robots” are in International Class 9. 

 

 

Furthermore, applicant must clarify the wording “scientific and technological services, relating to robotic machines, namely, by robotic cleaning and sanitizing equipment, including: research and design relating thereto; industrial analysis; industrial research and industrial design services; quality control and authentication services; design and development of computer hardware, firmware, and software; robotic customization services; maintenance, repair, sales, and leasing thereof, customer support therefor, and technical support thereof” in the identification of goods and services in International Class 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are. Specifically, this wording includes the indefinite wording “including” in the identification, which 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 services.  See TMEP §1402.03(a). 

 

 Further, this wording could identify services in more than one international class.  For example, “retail stores services featuring industrial robots” are business services in International Class 35, “custom manufacturing of robots” are in International Class 41, and “design and development of computer hardware, firmware, and software” are technological services in International Class 42. 

 

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

 

Class 7   -	Robotic machines, namely, automatic floor scrubbers, electric sweepers, road sweepers, snow throwers, vacuum cleaners, wet vacuum cleaners, dry vacuum cleaners, wet and dry vacuum cleaners, shop vacuum cleaners, automotive vacuum cleaners, residential vacuum cleaners, upright vacuum cleaners, canister vacuum cleaners, bag vacuum cleaners, bagless vacuum cleaners, lawn mowers, dry-cleaning machines; cleaning robots being industrial robots
Class 9   -	Water treatment equipment, namely, fertilizer injection units, namely, devices connected to a water distribution line, which automatically injects a predetermined proportion of fertilizer into an irrigation system used by a greenhouse complex; electronic systems, apparatuses, and devices in the nature of security surveillance robots
Class 11 -	Water treatment equipment, namely, water filtration units
Class 35 -	Retail stores services featuring industrial robots
Class 37 -	Technical support services, namely, technical advice related to the repair of industrial robots
Class 41 -	Custom manufacturing of robots
Class 42 -	Scientific and technological services, namely, scientific research and analysis in the field of robotic machines; industrial design services; quality control of goods and services; design and development of computer hardware, firmware, and software

 

 

ADVISORY: SCOPE OF ORIGINAL IDENTIFICATION

 

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.  See TMEP §1402.04.

 

Applicant should note the following additional requirements.

 

MUTLIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 7 classes; however, applicant submitted a fee(s) sufficient for only 3 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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

 

ASSISTANCE

 

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. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 March 09, 2021 for

U.S. Trademark Application Serial No. 90225700

 

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. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 March 09, 2021, 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.”