UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/280544

 

The examining attorney regrets to inform the applicant that the application has been withdrawn from publication as a result of the following issues pertaining to the identification of goods:

 

Identification of Goods

International Class 8

The goods “brushes for cleaning plumbing fittings” were classified incorrectly in International Class 8 as hand tools. These goods are classified in International Class 21. The applicant must amend the application to classify the goods in International Class 21.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b). The application does not currently feature International Class 21 as an active class. Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

In addition, the wording “brushes for cleaning plumbing fittings and pipes for the application of plumbing sealants” is also unacceptable in International Class 8 as pipes may be classified in more than one International Class.  It is unclear whether there is additional wording that is missing from the identification in connection with these goods or whether the brushes are the goods and they are used in connection with pipes for the application of sealants. The applicant must submit additional information to permit proper consideration of the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Recitation of Services

International Class 40

The applicant must submit additional information concerning the services identified as “planning of wood” to permit proper consideration of the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  In addition, the services of “cuffing” are unacceptable as indefinite. If this wording appeared in the applicant’s last response in error and the services should be “cutting” and “planing,” the applicant should correct these errors.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

The applicant may adopt the following, if accurate:

 

IC 001. US 001 005 006 010 026 046. G & S: Adhesives for use industrial uses in manufacturing; soldering fluxes.

        IC 006. US 002 012 013 014 023 025 050. G & S: Items of metal hardware, namely, bolts, brads, window casements, door casings, casters, chains, clamps, cotter pins, door bolts; metallic door hardware, namely keys and key cylinders; door knobs, fasteners, door rollers, guard rails, hinges, hooks, hose fittings, knobs, latches, locks, nails, nuts, pegs, plugs, rails, rivets, screws, shims, springs, and studs; metal building materials, namely, door frames, doors fencing gates, garage doors, gutter pipes, millwork, patio doors, sliding doors, screen doors, and window screens; metal pipes

        IC 008. US 023 028 044. G & S: Hand tools for use in plumbing, namely, socket sets; water heater element sockets; pipe cutters; hand tools, namely, handle pullers, used to pull faucet handles off of their fittings and nipple extractors; seat wrenches; spud wrenches; metal hand tools, namely, wrenches used to turn a water main off and on at street locations; basin wrenches; tubing cutters; crimpers, drills, hack saws, pipe wrenches, screwdrivers, torches, tubing cutters, vice grips and wire brushes; hand tools for use in wood working, metal working and carpentry, namely, adzes, augers, awls, bevels, chisels, clamps, drills, files, grinding wheels, grindstones, hammers mitre boxes, planers, planes, punches, rasps, saws and squares

        IC 009. US 021 023 026 036 038. G & S: Electrical flexes, wires and cables; electrical wiring accessories, namely, plugs, plug sockets, switches, switch boxes; protection devices, namely, fuse boxes, safety fuses, connections, transformers, control units for electrical appliances, cable and extension reels for use therewith, circuit breakers, socket outlets for coaxial cable plugs; conduit and housings for electric cables, junction boxes, earth sleeves for cables, condensers, electric coils, capacitors, electrical relays, and electrical circuit disconnects; control apparatus and instruments for use with or being parts of heating or water supply installations, namely, aerometers, ammeters, circuit breakers, capacitors, condensers, electromechanical controls, galvanometers, hygrometers, luminescent display panels, pressure gauges, pyrometers, thermostats, volt meters, and water meters; installations and apparatus for lighting, namely, ammeters, circuit breakers, electrical cables, electrical conductors, electricity conduits, electrical controllers, dimmers, light switches, fuses, motion sensitive switches, and electrical wires; non-metallic wall plugs in the nature of receptacles inserted into walls during construction for joinder or retention of electrical or other components

        IC 011. US 013 021 023 031 034. G & S: Installations and apparatus for lighting, namely, candelabras, chandeliers, fluorescent lighting tubes, lamps, electric lighting fixtures, electric track lighting units, electric night light, searchlights, and sun lamps; apparatus for heating, namely, air filters; barometric dampeners, heaters and pumps sold in combination for use in swimming pools and hot tubs; gas and electric fireplace inserts, comprised of andirons, artificial logs and artificial embers; fireplaces, furnace boilers, furnaces; fireplace inserts, namely, heat exchangers; portable electric heaters, solar heating panels, heat registers, and wood burning stoves; ventilating apparatus, namely, ventilating fans for commercial and industrial use; ventilating louvers, and ventilator hoods for ovens; air conditioning units, water purification units and water pumps; light bulbs and light fittings

        IC 017. US 001 005 012 013 035 050. G & S: Adhesive tape and sealants for industrial or commercial uses; extruded plastics in the form of rods, bars, sheets, and shaped sections for use in manufacturing; plastic pipes for plumbing, plastic tubes for plumbing; plastic hoses and fittings, namely, dishwater discharge hoses and washing machine hoses, rubber gasket material in sheets for plumbing; insulating materials, namely, sheets of plastic used as insulating infiltration barriers in construction and mastics, namely, plastic in the form of sheets for manufacturing; materials for packing, namely, adhesive packing tape for commercial or industrial use, cellulose acetate film used as an industrial or commercial wrapping materials, packing padding of plastic for shipping containers, strapping tape, and plastic stuffing for cartons and boxes

        IC 019. US 001 012 033 050. G & S: Glass for building purposes; non-metallic building materials, namely, wood and concrete beams, bricks, cement mixes, felt roof coverings, gravel, hardboard, joints for floors and walls, joists, laminated beams, lumber, mortars, particle board, plaster, plywood, roofing cement, tarred and asphalted roofing paper, roofing sealants, shingles, shutters, siding, skylights, stucco, studs, trusses; non-metallic articles for use in building, namely, bifolds, wooden window casements, ceramic tiles, door frames, doors, fencing gates and panels; fireplace mantels, garage doors, gutter pipes, millwork, patio doors, pavers, sliding doors, stained glass windows, screen doors, tiles, window screens; non-metallic articles for use in building repair and building decoration and in civil engineering construction, namely, asphalt, concrete blocks, ceiling panels, column posts and railings; concrete beams, fiberboard, flashing, granite, molding, paneling, plywood, roofing panels, shutters, trusses, vinyl flooring; non-metallic pipes for water supply, drainage, rainwater and sanitary purposes

IC 020. US 002 013 022 025 032 050. G & S: Furniture and parts and fittings therefor namely, partitions and moldings for furniture

IC 021. US 002 013 022 025 032 050 G & S: Brushes for cleaning plumbing fittings and for the application of plumbing sealants

        IC 035. US 100 101 102. G & S: Retail and wholesale store services and retail and wholesale online store services featuring plumbing supplies, heating supplies, refrigeration supplies, ventilation supplies, air conditioning supplies, electrical supplies, water supplies, pipeline supplies, control apparatus, building supplies, timber supplies, bathroom, bedroom and kitchen furniture, home improvement, catering supplies, household electrical goods

        IC 037. US 100 103 106. G & S: Rental of machines, namely, machine tools and of parts and fittings therefor; all for use in construction, renovation, decoration and repair of buildings, rental of construction apparatus and of scaffolding for use in construction; plumbing and heating services

        IC 039. US 100 105. G & S: Storage and transportation of building materials, plumbing, electrical, heating, ventilation, and air conditioning products; tools, water distribution, liquid and gas pipe, valves and fitting products and materials, for the construction, plumbing, electrical, refrigeration and HVAC industries, and companies that supply and produce energy

        IC 040. US 100 103 106. G & S: Woodworking and cutting, shaping and planing of wood; custom glass cutting services

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Conclusion

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

The examining attorney apologizes to the applicant for any inconvenience resulting from this supplemental action. If the applicant has any questions about the Office Action, please contact the assigned examining attorney.

 

/Linda M. Estrada/

Trademark Attorney, Law Office 105

(703) 308-9105, ext. 242

(703) 872-9825 Fax

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.