UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Search of Records Conducted

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Applicant must meet the following requirements.

 

1) Disclaimer Required

 

Applicant must disclaim the descriptive word “BLOCK” apart from the mark as shown because this word merely describes applicant’s goods, “hand tools” consisting of a polyethylene post driver cap in the shape of a block.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The word “block” in this context refers to “a large solid piece of material with flat surfaces on each side.”  See the attached definition from the Compact Oxford English Dictionary.

 

 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “BLOCK” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

2) Identification of Goods Indefinite – Clarification Required

 

The wording “hand tools” in the identification of goods needs clarification because it is indefinite. 

 

Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

 

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

 

Class 8: 

Hand tools, namely, _____ {specify type within scope of original identification, see ID Manual link below for assistance}

 

Scope Advisory

 

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

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

3) Color Claim and Color Description of the Mark Required

 

Applicant must submit the following color claim and color description, if the mark is intended to appear in green:  (1) a statement that “the color(s) green is claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the entire mark is in green.”  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

4) Description of Mark Required

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:

 

The mark consists of the word “The” in title case lettering and the word “BLOCK” in upper case lettering in between two half-circles, the curved portions of which are facing upward.  The word “BLOCK” is slanted upwards from left to right. 

5) Requirement For Additional Information

 

The applicant must indicate whether the mark has any significance in the relevant trade or in relation to the goods.  The applicant must also indicate whether the mark is a quality, characteristic, function, feature, purpose, or use of the applicant’s goods.  37 C.F.R. Section 2.61(b); TMEP Section 808.03(c).

 

Specifically, applicant must answer the following questions:

1)     Is the tool in the shape of a block?

2)     Do fencing installers or others in the fencing business typically refer to the tool as a block?

 

Responding to this Action

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each requirement raised.  Applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.  For applicant’s convenience, applicant may respond online using the link provided below. 

 

Applicant may hire a specialist attorney to assist in prosecuting this application.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

/Edward Fennessy/

Edward Fennessy

Trademark Examining Attorney

Law Office 114

1.571.272.8804

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.