Offc Action Outgoing

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:

 

This Office action is in response to applicant’s communication filed on July 11, 2008.

 

Search Results

 

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

 

Partial Refusal to Register – Unacceptable Specimen

 

The specimen is not acceptable to show trademark use in a display associated with the goods in Classes 2, 8, 9 and 21 because, although identified as a catalog page or webpage, it does not show the mark in close proximity to a picture of the goods.  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.03(h)-(i). 

 

A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink to order the goods.  Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.03(h), (i).

 

An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark in use in commerce for the goods specified in the application; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging.  TMEP §§904.03 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

 

Pending a proper response, registration is refused because the specimen does not show use of the applied-for mark in commerce as a trademark.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s):

 

Identification of Goods

 

The identification of goods in Classes 6, 8, 11, 17 and 21 are indefinite and must be clarified because the material composition of many of the goods are needed and the goods need to be properly classified.  See TMEP §1402.01.  Applicant may adopt the following identifications, if accurate: 

Class 6:  SILVER SOLDER, METAL LOCKS, METAL LATCHES, METAL HINGES, METAL DOOR STOPS AND METAL DOOR KNOBS, METAL BALL JOINT WASHERS, METAL WATER CLOSET NUTS, METAL WATER CLOSET BOLT WASHERS, METAL WATER CLOSET SCREWS; METAL JOINERY FITTINGS, NAMELY, COMPRESSION FITTINGS, COMPRESSION SLEEVE, COMPRESSION ELBOWS, COMPRESSION TEE, COMPRESSION UNION, FLARE ELBOW, FLARE FITTINGS, FLARE NUT, FLARE UNION, FLARE TEE, COMPRESSION NUT; METAL HOSE CONNECTORS, COPPER TUBING, STAINLESS STEEL DISHWASHER SUPPLY LINE, DRYER VENT KITS COMPRISED OF METAL CLAMPS, ALUMINUM DUCTING AND TRAP BUCKETS, METAL FACE PLATES; METAL FILTER HOSE WASHERS, METAL FIREPLACE KEYS, METAL PLATED FLANGES, METAL FLARE CAPS FOR PIPES, METAL FLEXIBLE DOOR STOP, METAL GAS RANGE FLEX CONNECTOR, METAL SINK HANGERS, METAL EXTENSION TUBE, METAL HOSE BARBS, METAL HOSE CONNECTORS, STAINLESS STEEL WASHING MACHINE HOSE, METAL J BEND, METAL NUTS, METAL P TRAPS, METAL PIPE REPAIR CLAMPS, METAL FLOAT RODS, METAL S TRAPS, METAL SEWER RODS, METAL SLIP JOINT NUTS, METAL SLIP JOINT WASHERS, METAL PIPES, NAMELY, BRANCH TAILPIECES;

Class 8:  HAND TOOLS, NAMELY, WRENCHES, HAND OPERATED PLUMBING SNAKES, AND NIPPLE EXTRACTORS FOR REMOVING NIPPLES FROM FAUCETS;

Class 11:  PLUMBING FITTINGS, NAMELY, FAUCETS, VALVES, SHOWERHEADS, COMPRESSION ADAPTERS, HANDLE ADAPTERS, FAUCET AERATORS, BALLCOCKS, BALLCOCK PARTS, DELTA BALLS, TANK BALLS, BATH SPRAY, DISHWASHER AIR GAP, DIVERTER SPOUT, SHOWER DOOR SEAL, SHOWER DRAINS, ESCUTCHEON NIPPLE, TOILET FLAPPERS, FLOW RESTRICTOR, FLUSH VALVE, FLUSH VALVE SEAL, FORCE CUPS, TOILET TANK LEVER, NIPPLES FOR FAUCETS, PERSONAL SHOWERS, SADDLE VALVES, FAUCET SEATS, SHAMPOO SPRAY, SHOWER ARMS, SHOWER DRAIN, SHOWER FLOW RESTRICTOR, SHOWER HEADS, SHOWER TREAD, SINK TRAP, SPRAY HEAD, STEMS, STRAINERS, SINK TUB, SWIVEL GLIDES, TOILET BOWL FLOATS, TOILET SEAT BUMPERS, TOILET TANK LEVERS, TUB COVE, VALVES, STAINLESS STEEL FAUCET CONNECTORS AND GAS FLEX CONNECTORS; COPPER WASTE CONNECTORS, COPPER WATER HEATER FLEX CONNECTORS, METAL FAUCET HANDLES, FAUCET HOLE COVERS AND FAUCET STEMS; BRASS TOILET BOWL FLANGE;

Class 17:  PIPE JOINT TAPE, ELECTRICAL INSULATING TAPE, PUTTY AND GASKET SEALER FOR USE IN PLUMBING, RUBBER WATER CLOSET BOWL RINGS, RUBBER CONE WASHERS; PIPE FITTINGS, NAMELY, CPVC CONNECTORS, PVC FAUCET CONNECTORS, PLASTIC WASTE CONNECTORS, RUBBER DISHWASHER DISPOSER CONNECTOR; RUBBER DISHWASHER DRAIN HOSE, RUBBER DISPOSER HUSH CUSHION, RUBBER DISPOSER SPLASH GUARD, PLASTIC FACE PLATES, NONMETAL GASKETS, RUBBER DISHWASHER DRAIN HOSE, PLASTIC WASHER DRAIN HOSE, PLASTIC J BEND, NONMETAL LAVATORY FLANGE GASKET, PLASTIC P TRAPS AND S TRAPS, RUBBER O RINGS STOPPER RINGS, NONMETAL SEAT HINGE GASKETS, RUBBER SHOWER BALL JOINT WASHERS, NONMETAL SINK GASKET, RUBBER SWING SPOUT WASHERS, RUBBER TANK WASHERS, PLASTIC TOILET BOWL FLANGE, VINYL TRAP COVER, PLASTIC SEAT BUMPERS, PLASTIC EXTENSION TUBE; NON-METALLIC PIPES, NAMELY, BRANCH TAILPIECES;

Class 21:  SOAP DISHES, TOWEL BARS, TOOTHBRUSHES HOLDERS AND TOILET PAPER ROLL HOLDERS, BASIN, STOPPERS FOR SINKS AND DRAINS, BASIN STOPPERS, TUBE BRUSHES, DISPOSER STOPPER.

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.

 

Responding to a Partial Refusal

 

The stated refusal refers to International Classes 2, 8, 9 and 21 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)     Deleting the classes to which the refusal pertains;

 

(2)     Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain.  See generally TMEP §§1110.05, 1403.03 (regarding the requirements for filing a request to divide).; or

 

(3)     Amending the basis for such classes, if appropriate.  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

 

How to Respond to this Office Action

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (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.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

Legal Assistance

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  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.

 

Contact Information

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Katina S. Mister/

Katina S. Mister

Trademark Examining Attorney

571-272-8889

katina.mister@uspto.gov

Law Office 104

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.