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

 

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. In order to pursue registration, however, the applicant must respond to the following requirements.

 

Inquiry Regarding Application Pursuant to Sections 1(b) and 44(d) and Requirement for the Submission of a Certificate of Foreign Registration

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration. 

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)   If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must provide a written statement to that effect.  In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b), (c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004.  A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation.  TMEP §1003.04.; or

 

(2)   If applicant intends to rely solely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must submit a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04.  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.

 

Requirement for Clarification of Indefinite Identification and Proper Classification of Goods

 

The identification of goods is unacceptable as indefinite. The applicant must clarify the identification as follows. TMEP §1402.01.

 

The wording “All of the afore-mentioned goods being included in Class 6,” “all of the aforementioned goods being in Class 20” and “Being included in Class 21” should be deleted from the recitation of goods in this application due to the fact that the goods identified in this application are not all in the aforementioned classes and the recitation of goods is indefinite enough to include goods from several other classes. This language is extraneous, inaccurate and unnecessary to the identification of goods, thus it must be deleted.

 

The wording “Fittings in particular for windows, doors and furniture” is unacceptably indefinite as to the type of goods or the material composition of the goods produced by the applicant. The applicant may clarify by amending to the following, if accurate: “Fittings for windows, doors and furniture, namely, {specify goods, e.g., metal door latches, metal latch bars, metal knobs, metal drawer pulls}” in International Class 006 or “Fittings for windows, doors and furniture, namely, {specify goods, e.g., non-metal door latches and latch bars, plastic knobs, wood knobs, drawer pulls of plastic or wood}” in International Class 020.

 

The wording “locks” is unacceptably indefinite as to the type of goods produced by the applicant, the intended use or purpose for the goods or the material composition of the goods. The applicant may clarify by amending to the following, if accurate: “bicycle locks,” “metal locks” in International Class 006 or “electric locks” or “electronic locks” in International Class 009.

 

The wording “lock and cylinder olives” is unacceptably indefinite as to the type of gods or their intended use or purpose. The applicant may clarify by amending to the following, if accurate: “Metal lock parts, namely, lock cylinders” in International Class 006.

 

The wording “lock cases” is unacceptably indefinite as to the material composition of the goods. The applicant may clarify by amending to the following, if accurate: “metal lock cases” in International Class 006.

 

The wording “pipes” is unacceptably indefinite as to the material composition of the goods and their intended use or purpose. The applicant may clarify by amending to the following, if accurate: “drain pipes made of metal,” “metal gutter pipes” or “metal pipes” in International Class 006 or “Flexible plastic pipes for plumbing purposes” in International Class 017.

 

The wording “rails” is unacceptably indefinite as to the material composition of the goods and their intended use or purpose. The applicant may clarify by amending to the following, if accurate: “metal rails” or “steel rails” in International Class 006 or “bathtub rails not made of metal” or “bed rails” in International Class 020.

 

The wording “handrails” is unacceptably indefinite as to the material composition of the goods and their intended use or purpose. The applicant may clarify by amending to the following, if accurate: “metal handrails” in International Class 006 and “non-metal handrails” in International Class 019

 

The identified “foot rests” are classified incorrectly in International Class 006.  Applicant must amend the application to classify the goods in International Class 020.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “hinges” is unacceptably indefinite as to the material composition of the goods and their intended use or purpose. The applicant may clarify by amending to the following, if accurate: “metal hinges” in International Class 006 or “non-metal hinges” in International Class 020.

 

The wording “their parts and fixing materials” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following placed after the list of goods that it references, if accurate: “and parts for all of the aforementioned goods.”

 

The wording “sliding screens” is unacceptably indefinite as to the material composition of the goods or their intended use or purpose for those goods. The applicant may clarify by amending to the following, if accurate: “Japanese sliding screens of thin paper (shoji)” in International Class 019.

 

The wording “inlay bases” is unacceptably indefinite as to the type of goods produced by the applicant and intended use or purpose. The applicant may clarify by amending to the following, if accurate: “Inlay bases, namely, {specify goods, e.g., decorative inlay borders}” in International Class 019 or “Inlay bases, namely, {specify intended use, e.g., inlay for furniture}” in International Class 020.

 

The “drawer dividers” goods are classified incorrectly in International Class 006.  Applicant must amend the application to classify the goods in International Class 020.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “compartment dividers” is unacceptably indefinite as to the type of goods produced by the applicant. The applicant may clarify by amending to the following, if accurate: “Compartment dividers, namely, dividers for drawers” in International Class 020.

 

The wording “compartment bases” is unacceptably indefinite as to the type of goods being produced by the applicant. The applicant may clarify by amending to the following, if accurate: “Compartment bases, namely, drawers” in International Class 020.

 

The “shelving” goods are classified incorrectly in International Class 006.  Applicant must amend the application to classify the goods in International Class 020.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “pull-out extensions [and] front pull-out extensions” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Shelving components and parts thereof, namely, pull-out shelf extensions and front pull-out shelf extensions” in International Class 020.

 

The wording “guides for drawers and hanging file racks” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Furniture hardware, namely, drawer guides and hanging file racks” in International Class 020.

 

The wording “drawer locking systems” is unacceptably indefinite as to the type of goods comprising the system. The applicant may clarify by amending to the following, if accurate: “Drawer locking system comprised of drawer locks” in International Class 020.

 

The goods “worktops” are classified incorrectly in International Class 006.  The applicant must amend the application to classify the goods in International Class 020.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “sliding and hook-in ladders” is unacceptably indefinite as to the material composition of the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Metal sliding and hook-in ladders” in International Class 006 or “Non-metal sliding and hook-in ladders” in International Class 020.

 

The wording “tie and belt holder” is unacceptably indefinite as to the type of goods that the applicant produces. The applicant may clarify by amending to the following, if accurate: “Tie and belt holder, namely, tie and belt racks” in International Class 020.

 

The wording “coat hanger rails” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Closet accessories, namely, clothes rails for coat hangers” in International Class 020.

 

The wording “trouser holders” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Closet accessories, namely, clothes bars for holding trousers” in International Class 020.

 

The wording “baskets/sliding baskets” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Closet accessories, namely, clothes baskets on sliding rails” in International Class 020.

 

The “shoe racks” goods are classified incorrectly in International Class 006.  Applicant must amend the application to classify the goods in International Class 020.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “clothes lifters” is unacceptably indefinite as to the type of goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Closet accessories, namely, sliding clothes rails for lifting clothes” in International Class 020.

 

The wording “shelf trays” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Shelf trays for computer keyboards” in International Class 020 “Butler’s shelf trays” or “Shelf meal trays” in International Class 021.

 

The wording “guide rails” is unacceptably indefinite as to the material composition of the goods or their intended use or purpose and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Metal guide rails” in International Class 006 or “Non-metal guide rails” in International Class 019.

 

The wording “swivel-mounted arms for monitors, pivoting extensions, CD/DVD holders and -rails” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Television mounting systems and mounting accessories, namely, swivel-mounted arms for monitors, pivoting mount extensions and CD and DVD player holders and interchangeable cross rails” in International Class 009.

 

The wording “dividers for compact discs” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Dividers for compact discs, namely, CD storage racks” in International Class 009.

 

The wording “CD/DVD-supports” is unacceptably indefinite as to the intended use or purpose for the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “CD/DVD supports, namely, {specify goods, e.g., cases, storage racks}” in International Class 009.

 

The wording “roller shutters” is unacceptably indefinite as to the type of goods produced by the applicant or its intended use or purpose. The applicant may clarify by amending to the following, if accurate: “Roller shutters, namely, {specify goods, e.g., interior metal shutters, metal roll shutters, metal window roller shutters}” in International Class 006 or “Roller shutters, namely, {specify goods, e.g., non-metal exterior roll shutters, non-metal exterior window roller shutters}” in International Class 019.

 

The wording “office containers” is unacceptably indefinite as to the material composition of the goods produced by the applicant or their intended use or purpose and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate:  “Office containers of metal for transport” or “General purpose metal office storage containers” in International Class 006, “Corrugated office containers,” “Paper office containers” or “Office storage containers made of paper” in International Class 016 or “Packing office containers of plastic” in International Class 020.

 

The wording “accessories for furniture” is unacceptably indefinite as to the type of goods produced by the applicant. The applicant may clarify by amending to the following, if accurate: “Accessories for furniture, namely, {specify goods, e.g., decorative pillows, chair pads, bolsters}” in International Class 020.

 

The wording “ladders” is unacceptably indefinite as to the material composition of the goods and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Metal ladders” or “Metal step ladders” in International Class 006 or “Non-metal ladders” or “Non-metal step ladders” in International Class 020.

 

The wording “appliances …for household and kitchen” is unacceptably indefinite as to the type of goods that the applicant produces and overly broad because the goods could be classified in more than one International Class. The applicant may clarify by amending to the following, if accurate: “Household and kitchen appliances, namely, {specify goods, e.g., electric toasters, electric cooking ovens, electric coffee makers}” in International Class 011.

 

Please also note that parentheses are not acceptable in the identification. TMEP §1402.12. Where indicated “{specify … },” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods without parentheses.

 

The following is a sufficiently definite identification of the goods and/or services recited in this application that the applicant may choose to adopt, if accurate:

 

International Class 006

 

Fittings for windows, doors and furniture, namely, metal door latches, metal latch bars, metal knobs, metal drawer pulls; metal locks; Lock parts, namely, lock cylinders and metal lock cases; Metal pipes; Metal hinges and parts for all of the aforementioned goods; Metal sliding and hook-in ladders; Metal guide rails; Metal ladders and step ladders; Roller shutters, namely, interior metal shutters, metal roll shutters, metal window roller shutters.

 

International Class 009

 

Television mounting systems and mounting accessories, namely, swivel-mounted arms for monitors, pivoting mount extensions and CD and DVD player holders and interchangeable cross rails; Dividers and supports for compact discs, namely, CD storage racks.

 

International Class 011

 

Household and kitchen appliances, namely, electric toasters, electric cooking ovens and electric coffee makers.

 

International Class 016

 

Corrugated office containers; Paper office containers; Office storage containers made of paper.

 

International Class 017

 

Flexible plastic pipes for plumbing purposes.

 

International Class 019

 

Non-metal handrails; Japanese sliding screens of thin paper (shoji); Inlay bases, namely, decorative inlay borders; Non-metal guide rails; Roller shutters, namely, non-metal exterior roll shutters, non-metal exterior window roller shutters.

 

International Class 020

 

Fittings for windows, doors and furniture, namely, non-metal door latches and latch bars, plastic knobs, wood knobs, drawer pulls of plastic or wood; Bed rails; Non-metal bathtub rails; Foot rests; Non-metal hinges and parts for all of the aforementioned goods; Inlay bases, namely, inlay for furniture; Drawer dividers; Compartment dividers, namely, dividers for drawers; Compartment bases, namely, drawers; Shelving; Shelving components and parts thereof, namely, pull-out shelf extensions and front pull-out shelf extensions; Furniture hardware, namely, drawer guides and hanging file racks; Drawer locking system comprised of drawer locks; Worktops; Non-metal sliding and hook-in ladders; Tie and belt holder, namely, tie and belt racks; Closet accessories, namely, clothes rails for coat hangers; Closet accessories, namely, clothes bars for holding trousers; Closet accessories, namely, clothes baskets on sliding rails; Shoe racks; Closet accessories, namely, sliding clothes rails for lifting clothes; Shelf trays for computer keyboards; Accessories for furniture, namely, decorative pillows, chair pads and bolsters; Non-metal ladders and step ladders.

 

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.

 

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.

 

Requirement for the Submission of Additional Fees or Restriction of Identification Language

 

The application identifies goods that are classified in at least seven (7) classes; however, the fees submitted are sufficient for only one (1) class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) Restrict the application to the class covered by the fee already paid, or (2) Submit the fees for the additional class. 

 

If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order; 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). 

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

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

 

 

/Amy C. McMenamin/

Trademark Attorney, Law Office 113

U.S. Patent & Trademark Office

Phone 571-272-8854

Fax 571-273-8854

 

 

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 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.