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:  January 14, 2021

 

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.

 

NO CONFLICTING MARK NOTED

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.

 

IDENTIFICATION OF GOODS AND SERVICES

Particular wording in the identification of goods and services must be clarified because the nature of the goods and services is indefinite, as indicated below with the suggested amendments in bold.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods and/or services.

 

Class 7 – The applicant must indicate whether the machines are automated and provide the common commercial name of the machines.

 

Class 9 - The applicant must clarify the nature of analog recording and storage media by using the common commercial name of the goods.

 

Class 42 – The applicant must clarify the field or subject matter of the services.

 

The applicant may adopt the following, if accurate:

CLASS 7

Machines, namely machines for humidifying tobacco and tobacco products, filling machines, machines for handling material to be conveyed; AUTOMATIC INDUSTRIAL LABELING machines FOR APPLYING BAR CODE LABELS TO CONTAINERS AND BOTTLES for the pharmaceutical industry, machines for applying codes on pharmaceutical products and MACHINES FOR PACKAGING pharmaceuticals packagings, machines for processing of filtering materials for tobacco products, AUTOMATIC INDUSTRIAL machines for picking up goods, NAMELY, {Specify common commercial name of the machine, e.g., fork lift}; machines for loading and unloading goods, machines for filling cartridges for electronic smoking equipment, machines for inserting prospectuses in packagings ENVELOPE STUFFING AND inserting MACHINES, machines for depalletising goods, AUTOMATIC INDUSTRIAL product labelling machines FOR APPLYING LABELS TO CONTAINERS, POWER-OPERATED INDUSTRIAL machines for gripping goods, POWER-OPERATED INDUSTRIAL machines for lifting goods, machines for palletising goods, POWER-OPERATED INDUSTRIAL machines for sorting pharmaceutical products and in particular for sorting tablets, dragées and capsules, POWER-OPERATED INDUSTRIAL machines for transporting pharmaceutical products, pharmaceutical containers and packagings, machines for transporting goods, NAMELY, {Specify Class 7 transporting machine based on goods transported}, machines for filling electronic cigarettes, ELECTRONIC machines for the labelling and printing of containers and packaging FOR COMMERCIAL USE, machines for manufacturing and filling inhalers and/or components thereof, AUTOMATED machines for manufacturing and filling smokers' articles, AUTOMATED machines for manufacturing electronic cigarettes and parts thereof, AUTOMATED machines for manufacturing tissue paper products, AUTOMATED machines for manufacturing paper products, AUTOMATED machines for manufacturing pharmaceutical products, AUTOMATED machines for manufacturing toilet paper, AUTOMATED machines for manufacturing drinking straws, AUTOMATED machines for manufacturing vaporizers, machines for manufacturing packagings for pharmaceutical products, AUTOMATED machines for producing cigarettes, AUTOMATED machines for producing cigarillos, AUTOMATED machines for producing cigars, machines for the commissioning of goods, NAMELY, {Specify the function of the machine by indicating what the machine is doing and what goods are made}; machines for cleaning pharmaceutical containers, machines for processing tissue papers, machines for processing {Specify type of paper, e.g., wall} paper, machines for processing tobacco leaves, mixing machines, cross belt sorter machines FOR {Specify what is being sorted, e.g., gravel, fruit, rice, tea leaves}, rack operating machines, NAMELY, {Specify purpose and nature of machine}, cutting machines, sifting machines, FOR {Specify what is being sorted, e.g., gravel, fruit, rice, tea leaves} sorting machines, tobacco cutting machines and tobacco processing machines; machine tools FOR {indicate purpose or function, e.g., compacting powder materials, crushing rock, etc.}; power operated tools, namely, {specify tools, e.g.,  impact wrenches, ratchet wrenches, drills, grinders, orbital sanders, etc.}; motors, other than for land vehicles; propulsion mechanisms PROPELLERS FOR MACHINES, other than for land vehicles; machine coupling and transmission components (except for land vehicles); machines and components thereof for the tobacco processing and cigarette and cigar industry; machines for the treatment of tobacco, NAMELY, TOBACCO PROCESSING MACHINES; machines for the manufacture of filters for tobacco products; conveyors BEING MACHINES; packaging machines; machines for manufacturing paper, including machines for manufacturing cardboard, tissue and non-woven material; machines and machine apparatus for processing plastics; die-cutting machines; die-stamping machines; machines for the graphic industry, especially NAMELY, printing machines; machines for processing print products, NAMELY, {Specify the function intended by “processing”, e.g., folding paper, stapling paper}; AUTOMATED INDUSTRIAL stapling presses MACHINE OTHER THAN FOR SURGICAL OR STATIONERY USE, stacking machines printing machines; palletizers; palletising robots (machines); electric ELECTRO-CHEMICAL discharge machines FOR METALWORKING; laser machines FOR {Specify purpose, e.g., welding, engraving, cutting}; tool grinding machines; production grinding machines FOR {Specify the function of this machine}; sorting machines for tobacco products and cigarette filters.

CLASS 9

Scientific, research, navigation, surveying, photographic, film, audio-visual, optical, weighing, measuring, signalling, detection, testing, checking, life-saving and teaching apparatus and instruments, NAMELY, {Specify the apparatus or instrument}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling the distribution and use of electricity; apparatus and instruments for recording, transmission, reproduction or processing of sound, images or data; recorded media, IN THE NATURE OF {Specify the type and subject matter of the content, e.g., electronic publications, namely, (indicate specific type of publication, e.g., book, magazine, manual} featuring (indicate subject matter)}; downloadable media IN THE NATURE OF {Specify the type and subject matter of the content, e.g., electronic publications, namely, (indicate specific type of publication, e.g., book, magazine, manual} featuring (indicate subject matter)}; DOWNLOADABLE computer software FOR {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; blank digital RECORDING AND STORAGE MEDIA; BLANK ANALOGUE RECORDING AND STORAGE MEDIA, NAMELY, {Specify media, e.g., record discs} or analogue recording and storage media; computers; computer peripheral devices; electronic publications, NAMELY, {indicate specific type of publication, e.g., book, magazine, manual} FEATURING {indicate subject matter} recorded on computer media; ELECTRONIC databases IN THE FIELD OF {indicate subject matter or field} RECORDED ON COMPUTER MEDIA; material testing and measuring instruments and machines; {Specify type, e.g., motion, timing, infrared, alarm} sensors; optical control apparatus, NAMELY, {Specify the nature of the apparatus, e.g., lighting control panels and optical sensors}; metal detectors; lasers, not for medical purposes; electric apparatus for ELECTRICITY commutation as well as ELECTRICITY distribution consoles and control cabinets; electrical and electronic controls and control installations consisting thereof FOR {Specify the use or purpose of the controls, e.g., to reduce speed, use with power converters, for motors}; thermometers, not for medical purposes; camcorders; {Specify type, e.g., automatic pill, Geiger, thread}counters; measuring apparatus for tobacco products and cigarette filters, NAMELY, {Specify measuring apparatus, e.g., scales}; INTEGRATED CIRCUIT chips FOR {Specify purpose, e.g., digital video compression, encoding digital video};

CLASS 42

 

Scientific and technological services, NAMELY, research and design IN THE FIELD OF {indicate field or subject matter} relating thereto; industrial analysis IN THE FIELD OF {indicate field or goods that are subject of analysis}; industrial research IN THE FIELD OF {indicate field or goods that are subject of research}; industrial design; quality control OF GOODS AND SERVICES; PROVIDING USER authentication services USING {indicate technology, e.g., single sign-on technology, biometric hardware and software technology, etc.} FOR E-COMMERCE TRANSACTIONS; design and development of computer hardware and software; engineering services IN THE FIELD OF {Specify, e.g., design, architecture, energy efficiency}; information technology services, NAMELY, {Specify the nature of the services, e.g., consulting}; Development of usage concepts with regard to technical matters IN THE FIELD OF FACILITIES MANAGEMENT (facility management); design, development and servicing of computer software; advisory services relating to computer programming; preparation, NAMELY, WRITING AND DEVELOPMENT of data processing programmes; surveying; mechanical research; technical project planning, technical production planning and technical consultancy FOR PRODUCT DESIGN ENGINEERING; updating, rental and servicing of computer software; technical project management in the field of IT; Software as a service (SAAS) SERVICES, NAMELY, hosting software for use by others for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; rental of computers, computer software and web servers; design of program and database systems for data processing; implementation of IT programs on networks; system administration for software-based systems; technical consultation services in the field of packaging technology and packaging design; services of a packaging designer; quality control of pharmaceutical products; conducting medical studies TECHNICAL RESEARCH IN THE FIELD OF for pharmaceutical STUDIES; development of pharmaceutical preparations and medicines; research on the subject of pharmaceuticals; technical consultancy in the field of the packaging of pharmaceutical products.

 

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.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (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(a) basis.  See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  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).  

 

                                       

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

 

 

/Aisha C. Johnson/

Examining Attorney

Law Office 101

United States Patent and Trademark Office

(571) 272-9295

aisha.johnson@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 January 14, 2021 for

U.S. Trademark Application Serial No. 90274125

 

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. 

 

 

/Aisha C. Johnson/

Examining Attorney

Law Office 101

United States Patent and Trademark Office

(571) 272-9295

aisha.johnson@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 January 14, 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.”