From: Tarcu, Catherine L.
`
`
`
`Sent: 5/16/2015 10:37:55 AM
`
`
`
`To: TTAB EFiling
`
`
`
`CC:
`
`
`
`Subject: U.S. TRADEMARK APPLICATION NO. 86149521 - N/A - Request for Reconsideration Denied -
`Return to TTAB
`
`
`
`
`
`
`
`*************************************************
`
`Attachment Information:
`
`Count: 1
`
`Files: 86149521.doc
`
`
`
`
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`
`
`U.S. APPLICATION SERIAL NO. 86149521
`
`
`
`MARK:
`
`
`
`CORRESPONDENT ADDRESS:
` KENNETH D. SUZAN
`
` BARNES & THORNBURG LLP
`
` 225 S 6TH ST STE 2800
`
`
`
`*86149521*
`
`
`
`GENERAL TRADEMARK INFORMATION:
`
`http://www.uspto.gov/trademarks/index.jsp
`
`
`
` MINNEAPOLIS, MN 55402-4662
`
`VIEW YOUR APPLICATION FILE
`
`
`
`
`
`
`
`APPLICANT: ATEK Access Technologies, LLC
`
`
`
`CORRESPONDENT’S REFERENCE/DOCKET NO:
`
` N/A
`
`CORRESPONDENT E-MAIL ADDRESS:
`
` Trademarks-MI@btlaw.com
`
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION DENIED
`
`ISSUE/MAILING DATE: 5/16/2015
`
`
`
`
`This Action is in response to the applicant’s Request for Reconsideration filed on April 24, 2015.
`Before the issuance of this Action the examining attorney and attorney of record spoke several
`times via email and telephone in an attempt to resolve this issue via an Examiner’s Amendment.
`
`

`

`The applicant is encouraged to adopt the examining attorney’s Identification of Goods
`Amendment suggestions addressed in the Final Office Action issued on October 24, 2014.
`
`
`
`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following requirement(s) and/or refusal(s) made final in the Office action dated October
`24, 2014 are maintained and continue to be final:
`
`• Amendment of Identification of Goods – Partial as to the Goods Identified Below in International
`Classes 6 and 9 Only
`
`
`
`
`
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`
`In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
`
`
`
`If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
`
`
`
`If no appeal has been filed and time remains in the six-month response period to the final Office action,
`applicant has the remainder of the response period to (1) comply with and/or overcome any
`outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP
`§715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay
`or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
`
`
`
`
`
`AMENDMENT OF IDENTIFICATION OF GOODS – PARTIAL AS TO THE GOODS IDENTIFIED BELOW IN
`INTERNATIONAL CLASSES 6 AND 9 ONLY
`
`

`

`
`
`The changes made by the applicant to the Identifications in the applicant’s Request for Reconsideration
`filing have been incorporated into the suggested revisions below.
`
`
`
`
`
`International Class 6:
`
`
`
`The wording “aluminum trim” in the Identification of Goods must be clarified because it is too broad and
`could include goods in other international classes. See TMEP §§1402.01, 1402.03.
`
`
`
`In addition, the wording identified in bold below in the identification of goods is indefinite and must be
`clarified because the wording does not make clear the nature of the goods provided. See TMEP
`§1402.01.
`
`
`
`Applicant may adopt the following identification, if accurate:
`
`
`
`Aluminum trim for buildings (or add IC 12 if related to automotive trim); metal rails, namely, metal
`guiderails; metal bollards; metal posts; metal corrals for use as {indicate use, e.g. fencing}; metal
`storage reels for wire, cable, metal ribbon, non-metal ribbon, flexible circuits, superconductors, film,
`magnetic tape, recording tape and testing strip material; metal spools for {indicate nature or purpose,
`e.g. for use with dispensing and storing metal wire, or for reeling flexible tubes of metal, etc.}.
`
`
`
`International Class 9:
`
`
`
`The wording identified below in bold in the Identification of Goods must be clarified because it may be
`too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. In
`addition, the wording identified in bold below in the identification of goods may be indefinite and
`
`

`

`therefore must be clarified because the wording does not make clear the nature of the goods provided.
`See TMEP §1402.01.
`
`
`
`Applicant may adopt the following identification, if accurate:
`
`
`
`Electronic control systems and components for {indicate usage for or with, e.g. machines, engines},
`namely, electronic key-shaped and token-shaped portable data carrier systems comprised of central
`processing units (cpu), integrated circuits, and electronic non-volatile memory; Electronic systems and
`components, namely, electronic key receptacles and computer access terminals; Electronic mating
`receptacles used to interface electronic data carriers with microprocessors, microcontrollers and
`personal computers; Electronic mating unit in the nature of a data carrier reader and writer used to
`interface electronic data carriers with host microprocessors, programmable logic controllers (plcs),
`microcontrollers, or computers, with the capability to read and write information from/onto the data
`carrier based upon the data carrier's own electrical and command interface; Electronic evaluation
`modules, electronic control circuits and electronic interface units for use in interface tasks between
`electronic systems; Blank programmable electronic data carriers; Data carrier readers and writers used
`to interface with microprocessors, microcontrollers, and personal computers; Containers for
`commercial use to house semiconductors, integrated circuits, microprocessors and microcomputers
`(This identification is an International Class 20 good, however, if moved to International Class 20 the
`Identification must be amended to indicate that the goods are not of metal); Computer memory
`storage units for use in connection with {indicate specific IC 9 use, e.g. computer access control
`applications}; Electronic security control units for use in computer access control applications;
`Electronic motion sensitive switches; Electronic touch sensitive switches; Electrical switches; Electric
`push plate switches; Electric wall switches; Electric switches, namely, automatic door switches; Electric
`sensors, namely, automatic door sensors; Pressure sensitive mats in the nature of {indicate specific IC 9
`good, e.g. Electronic sensing apparatus, namely, floor mats that sense the presence of a body
`thereon}; Door mats, namely, Automatic door mats {this is an international class 27 Identification.
`This items should be deleted or International Class 27 should be added to the application as indicated
`below}; Door mats, namely, door activation mats {this is an international class 27 Identification. This
`items should be deleted or International Class 27 should be added to the application as indicated
`below}; Door mats, namely, Revolving door mats {this is an international class 27 Identification. This
`items should be deleted or International Class 27 should be added to the application as indicated
`below}; Electronic safety mat, namely, {indicate specific good, e.g. a floor mat that …indicate purpose
`or function. This item also appears to be classified in International Class 27}; Switch mats, namely,
`{indicate nature of goods, e.g. floor mats that protect against injury in IC 27 or “electronic switch
`mats” in International Class 9}; Pressure sensitive security mats, namely, {indicate nature of goods, e.g.
`mats containing electronic sensing apparatus that sense the presence of a body thereon}; Pressure
`sensitive safety strips, namely, {indicate nature or purpose of goods, e.g. metal strips as parts of
`
`

`

`machines in IC 7, or lighting strips in IC 11, or flashing safety lights in IC 9}; Electronic industrial safety
`mat, namely, {indicate specific nature of mat, e.g. a mat containing electronic sensing apparatus that
`sense the presence of a body thereon}; Safety device which is fixed to the frame and door on the hinge
`or pivot side of a door which closes off the open area and expels fingers and hands from the entrapment
`area upon door closing preventing injury and amputation; Magnetic switches; Electronic transmitters
`and receivers for automatic door controls; Transmitters and receivers for sequencing automatic door
`openers; Electronic key fobs; Electric junction boxes; Electronic apparatus, namely, sonic wave detectors
`for access control and security systems; Laser detectors for access control and security systems;
`Magnetic object detectors for access control and security systems; Electronic keys, namely, {indicate
`nature of goods, e.g. electronic key cards} for access control and security systems; Electronic monitors
`for monitoring safety mats; Electronic control systems for {indicate for use with, e.g. machines,
`engines, etc.} that access control, security systems and safety controls; Electronic monitors for
`monitoring liquid levels in tanks; Electronic transmitters and receivers for tank monitoring systems;
`Electronic control systems for {indicate for use with, e.g. machines or engines} for monitoring liquid
`levels in tanks; Computer software for collection, editing, organizing, modifying, transmission, storage
`and sharing of data and information for tank monitoring systems.
`
`
`
`In view of the foregoing, the requirement to amend the identification of goods is continued and
`remains final.
`
`
`
`An applicant may only amend an identification to clarify or limit the services, but not to add to or
`broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
`
`
`
`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.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
`
`
`
`MULTIPLE-CLASS APPLICATION REQUIREMENTS
`
`
`
`The application identifies goods and/or services that are classified in at least 9 classes; however,
`applicant submitted a fee(s) sufficient for only 8 class(es). In a multiple-class application, a fee for each
`class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
`
`

`

`
`
`Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees
`already paid, or (2) submit the fees for each additional class.
`
`
`
`For an application with more than one international class, called a “multiple-class application,” an
`applicant must meet all the requirements below for those international classes based on an intent to
`use the mark in commerce under Trademark Act Section 1(b):
`
`
`
`
`
`
`
`(1)
`
`LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods
`and/or services by international class.
`
`(2)
`
`PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application
`filing fee for each international class of goods and/or services not covered by the fee(s)
`already paid (confirm current fee information at
`http://www.uspto.gov/trademarks/tm_fee_info.jsp).
`
`See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
`
`
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned
`trademark examining attorney. All relevant e-mail communications will be placed in the official
`application record; however, an e-mail communication will not be accepted as a response to this Office
`action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191;
`TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide
`additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the
`trademark examining attorney may not provide legal advice or statements about applicant’s rights. See
`TMEP §§705.02, 709.06.
`
`
`
`
`
`
`
`

`

`/Catherine L. Tarcu/
`
`Trademark Examining Attorney
`
`Law Office 105
`
`(571) 272-6120
`
`Catherine.Tarcu@USPTO.GOV
`
`
`
`
`
`
`
`
`
`
`
`