Offc Action Outgoing

Upon further consideration, the assigned examining attorney has reviewed the referenced application and determined the following. Every attempt is made to address all relevant issues in the first examination of trademark applications. The examining attorney regrets any inconvenience to the applicant at this time.

Specimen Refusal – All Classes

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods based on Section 1(a) in the application. 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), 1301.04.

In this case, the specimen includes a catalog and order forms. However, the specimen does not show the applied for mark used in connection with the goods identified in the original application. Rather, the specimen shows use of the mark in connection with catalog services featuring the identified goods or retail store services featuring the identified goods.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use of the mark for each class of 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 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, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq.

Option to Amend Filing Basis

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 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 the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Sample Declaration

Should the applicant’s response contain any statements or documents that require verification, please note the following:

The following is a properly worded declaration under 37 C.F.R. §2.20. Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a). TMEP §804.01(b).

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Identification of Goods

Clarification Required

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

Applicant must clarify the identification of goods by indicating the material composition and classifying accordingly, where specified. See TMEP §1402.01.

The word “kits” in the identification of goods is indefinite and must be clarified. See TMEP §§1401.05, 1402.01, 1402.03. Kits consist of a group of items that either (1) share a common theme, or (2) are used to make a particular product. The nature of the kit will determine its classification. Therefore, applicant must amend the identification to identify more clearly the nature of each kit and to determine its appropriate classification, using the guidelines below. See TMEP §§1401.05, 1402.01, 1402.03.

Dryer Vent Kits

For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first. Generally, the international class of the kit will be determined by the international class of the majority of items in the kit. For example, “nail care kits comprising nail polish, emery boards, cotton balls for cosmetic purposes and nail clippers” are in International Class 3 because this is the international class of a majority of the items (with the only item not in International Class 3 being “nail clippers,” which is in International Class 8).

For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item].” Generally, the international class for this type of kit will be determined by the international class of the product being made. For example, “kits for making bird feeders” are in International Class 21 (the class for “bird feeders”), and “kits for making clocks” are in International Class 14 (the class for “clocks”).

Misclassification

The following goods are classified incorrectly: shower curtain rods, saddletrees, toilet tissue roller, shampoo spray. Applicant must amend the application to classify the goods in the proper International Class, as indicated below. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

Advisory and Suggestions

The following is an amended version of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.

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

Class 02: Paint

Class 06: Silver solder, metal locks, metal latches, metal hinges, metal door stops and metal door knobs; metal ball joint washers; metal water closet bolt washers; metal water closet bowl rings; metal water closet nuts; metal water closet screws; elbows of metal for pipes, namely, compression elbows; metal pipe fittings, namely, compression fittings; metal compression nut; metal hardware namely, cone washers; metal pipe connectors, namely, cpvc connectors, faucet connectors, gas flex connectors, waste connectors, water heater flex connectors, dishwasher disposer connector; metal hose fittings, namely, hose connectors; tubing of copper alloys; metal pipe couplings, metal filter hose washers; metal hoses for plumbing use, namely, dishwasher drain hose and supply lines; metal extension tube; metal keys for fireplaces; metal plated flanges; metal couplings for use with drain hoses, namely flare caps; elbows of metal for pipes, namely, flare elbows; metal flare nut; metal sink hangers; metal toilet seat hinges; metal drain pipes in the nature of a j bend, s traps, and p traps; metal lavatory flange gasket; metal pipes, namely, pipe repair clamps; metal seat hinge gaskets; metal slip joint nuts and slip joint washers; meal swing spout washers

Class 07: Disposer splash guard, namely, slash baffles and guards for use in garbage disposals

Class 08: Hand tools, namely, wrenches and hand operated plumbing snakes

Class 09: Electric cords, electric sockets, electric outlets, electric outlet plates, electrical connectors; face plates, namely, electric switch plates

Class 11: Plumbing fittings, namely faucets, valves, shower heads, compression adapters, handle adapters, aerators for faucets, ball cocks, ball cock parts, delta balls, toilet tank balls, bath faucet sprayers, pipes being parts of sanitary facilities, namely, branch tailpiece, toilet accessories, namely, seat bumpers, diverter spout, shower drains, faucet handles, faucet reseater sets comprising, {specify particular goods}, faucet stems, toilet flappers, flow restrictor, flush valve, flush valve seal, toilet tank lever, namely, flush levers, personal showers, toilet seat screw bumpers, faucet seats, shower drain, shower flow restrictor, sink trap, shower head sprayers, sink strainers, sinks, toilet bolt caps, toilet bowl seats, toilet bowl floats, namely, toilet tank balls, toilet seat bumpers, toilet seat hinges, toilet tank flush levers

Class 17: Pipe joint tape, electrical insulating tape, and gasket sealer for use in plumbing; putty for use by plumbers for affixing toilets; pipe gaskets; insulating sleeves for water heaters; adhesive bath tub appliqués; waterproof sealants in the nature of shower door sealant; pipe gasket; friction rings, namely, watertight rings for plumbing pipes; plastic plumbing hoses, namely, dishwasher drain hose, washer drain hose, washing machine hose; rings of rubber for use as pipe connection seals; sink pipe gaskets

Class 18: Saddletrees

Class 20: Door stops of plastic; shower curtain rods; shower grab bars not of metal; furniture fittings, not of metal, namely, swivel guides for furniture legs

Class 21: Soap dishes, towel bars, toothbrushes holders and toilet paper roll holders; drain stoppers for basin drains; wire brushes, not being machine parts, namely, tube brushes; force cups, namely, plungers for clearing blocked drains; shampoo dispensers

Class 27: Decorative safety pads, namely, rubber bath mats

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

ID Manual Online

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. See TMEP §1402.04.

Multiple Class Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) Applicant must list the goods by international class; and

(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

RESPONSE GUIDELINES

There is no required format or form for responding to an 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 title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

Address the Refusals and/or Requirements

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

Sign the Response

The response must be personally signed or the electronic signature manually entered 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). TMEP §§605.02, 712.

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

/cblomquist/

Christine Blomquist

Law Office 104

Examining Attorney

Office: 571-272-1630

Fax: 571-273-9104

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.