To: | Teck Resources Limited (daltmdept@bakerbotts.com) |
Subject: | U.S. Trademark Application Serial No. 90263866 - GALILEO - 064483.___ |
Sent: | April 02, 2021 04:26:40 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90263866
Mark: GALILEO
|
|
Correspondence Address: |
|
Applicant: Teck Resources Limited
|
|
Reference/Docket No. 064483.___
Correspondence Email Address: |
|
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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S 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:
REQUIREMENT TO AMEND CLASSIFICATION/IDENTIFICATION OF GOODS AND SERVICES
Where, specified below, the identification of goods and services is indefinite and must be clarified because the nature of the goods and services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. Regarding goods, if the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Similarly, regarding services, 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.
Applicant should note the following specific guidance.
RE: International Class 9:
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).
RE: International Class 35:
Moreover, applicant has classified “technical consulting in the fields of mining exploration, mining, mining automation and logistics in International Class 35; however, the proper classification is International Class 37 because mining extraction services are classified in Class 37 and consulting services are classified according to the subject matter of the consulting service. For example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e). Therefore, applicant may respond by reclassifying these services in the proper international class.
In addition, the wording “implementation of robotics and remote operations in the field of mining”” in the identification of services is indefinite and must be clarified because the nature of the services is not clear. 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 services. See TMEP §1402.01. 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.
RE: International Class 37:
As previously discussed, the wording “including” in the identification of services 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 services. See TMEP §1402.03(a).
RE: International Class 42:
The wording “software as a service featuring computer software platforms in the fields of mining exploration, mining, mining automation and logistics including real time analysis and control of assets and operations” in the identification of services is indefinite and must be clarified because the nature of the services is not clear. 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 services. See TMEP §1402.01. 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. Additionally, the service must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).
Applicant may adopt the following wording, if accurate (proposed amendments in bold):
International Class 9: {specify format of software class 9, e.g., downloadable computer software for mining
exploration, mining, mining automation and logistics, including namely, software that enables the integration of advanced
analytics with autonomous mine equipment; recorded computer software for mining exploration, mining, mining automation and logistics, including
namely, software that enables the integration of advanced analytics with autonomous mine equipment}
International Class 35: Technical consulting in the fields of mining exploration, mining, mining automation
and logistics; {reclassify in Class 37 or clarify how services are business consulting services properly classified in Class 35}; implementation of robotics and remote
operations in the field of mining, namely, {specify the common commercial name of implementation service in Class 35 or
reclassify}
International Class 37: providing information in the field of mining including, namely, information on mining exploration, mining automation, operations, logistics and technological advancements and innovations over a global computer network;
technical consulting in the fields of mining exploration, mining, mining automation and logistics; implementation of robotics and remote operations in the field of
mining {reclassified from Class 35 if accurate}
International Class 42: Research and development in the fields of mining exploration, mining, mining automation and logistics; Platform as a service (PAAS) featuring computer software platforms in the fields of mining exploration, mining, mining automation and logistics including namely, software that enables real time analysis and control of assets and operations; hosting a digital platform in the fields of mining
exploration, mining, mining automation and logistics; providing online non-downloadable computer software for mining exploration, mining, mining automation and logistics,
including namely, software that enables the integration of advanced analytics with autonomous mine equipment {reclassified from Class 9 if accurate}; implementation of robotics and remote operations in the field of mining, namely, implementation of
robotics and remote operations computer technology for others {reclassified from Class 35 if accurate}
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).
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 requirement.
REQUEST FOR INFORMATION – REQUIREMENT TO PROVIDE INFORMATION ABOUT SERVICES
To permit proper examination of the application, applicant must submit additional information about applicant’s services in the nature of “implementation of robotics and remote operations in the field of mining” in International Class 35 because the nature of such services is not clear from the present record. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). The requested information should include fact sheets, brochures, and/or advertisements and promotional materials. If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
REQUIREMENT TO PROVIDE FOREIGN REGISTRATION CERTIFICATE
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 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), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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.
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.
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571) 270-7210
oreoluwa.alao@uspto.gov
RESPONSE GUIDANCE