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 letter is in response to the correspondence filed on June 9, 2008 in which the applicant submits a copy of the Registration for European Community Trademark Registration No. 005777495, seeks to rely solely on the priority basis under Section 44(e) and seeks to amend its identification its identification of goods.

 

The submitted copy of the foreign registration is acceptable and the record for this application is amended to include this submission and the filing basis for Intent to Use has been deleted from the record for this application. The proposed amendment to the identification of goods is unacceptable for the following reasons. Upon review of the facts currently of record, the examiner now issues the following requirements.

 

NEW ISSUE –Requirement for Submission of Description of the Mark

 

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

 

The mark consists of the wording TOPCO with a vertical line appearing under the letters P and the second O and a horizontal line with arrows at either end appearing between the vertical lines underneath the letters PCO.

 

 

 

NEW ISSUE –The Identification of Goods for the American Application is Beyond the Scope of the Goods as Identified in the Foreign Registration

 

The following wording in the identification of goods in the U.S. application is unacceptable because it exceeds the scope of the goods in the foreign application or registration:  “metal sliding and hook-in ladders,” “metal guide rails” and “shelving components” in International Class 006, “bed rails, non-metal bathtub rails; footrests,” “sliding screens” and “shelving components and parts thereof, namely, pull-out shelf extensions” in International Class 020 and  “Appliances …for household use” in International Class 021. See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Therefore, applicant must satisfy one of the following:

 

(1)     Amend the identification of goods in the U.S. application to correspond to the goods identified in the foreign application or registration, ensuring that all goods beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)   Delete the Trademark Act Section 44 basis for the goods beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods.

 

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. V. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

 

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §806.02.  If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods to which that basis applies.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).  If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

The applicant may clarify by amending to the following, if accurate: “Metal hand rails, namely, bed hand rails and bathtub hand rails” in International Class 006 or: “Furniture fittings, namely, metal sliding and metal hook-in hanging ladders” and “Metal guide rails for drawers and suspended filing frames,” “Non-metal hand rails, namely, bed hand rails and bathtub hand rails,” “Non-metal foot rails with supports, namely, footrests,” “Furniture fittings, namely, metal and non-metal sliding and hook-in hanging ladders” and “Metal and non-metal guide rails for drawers and suspended filing frames for hanging file racks” in International Class 020.

 

 

 

CONTINUED -Requirement for Clarification of Indefinite Identification and Proper Classification  of Goods

 

The identification of goods is unacceptable as indefinite and/or improperly classified. The applicant must clarify the identification as follows. TMEP §1402.01.

 

International Class 006

 

The wording “expanding sleeves and inset sleeves” is unacceptably indefinite as to the intended use or purpose for the goods. The applicant may clarify by amending to the following, if accurate: “Expanding sleeves and inset sleeves for {specify use/purpose for goods, e.g., affixing screws, affixing nuts}” in International Class 006.

 

The wording “shelf connectors” is unacceptably indefinite as to the type of goods that the applicant produces. The applicant may clarify by amending to the following, if accurate: “Shelf connectors, namely, metal shelf brackets” in International Class 006.

 

The wording “corner connectors” 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: “Corner connectors for doors, namely, metal hinges” or “Corner connectors for furniture, namely, metal brackets and metal hinges” in International Class 006.

 

The wording “connecting angles” is unacceptably indefinite as to the intended use or purpose for the goods. The applicant may clarify by amending to the following, if accurate: “metal form connecting angles” in International Class 006.

 

The wording “headboard connectors” and “footboard connectors”  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: “Headboard and footboard connectors, namely, metal brackets” in International Class 006.

 

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

 

The scope of the wording “metal sliding and hook-in ladders” and “metal guide rails” was limited to the “accessories for furniture” language prefacing the identification of the aforementioned in the original application and “furniture fittings” and “guides for drawers and suspended filing frames” in the identification of goods in the  foreign registration. The current identification stripping this scope limiting preface language from the “metal sliding and hook in ladders” and “metal guide rails” impermissible expands the scope of the goods as they were originally identified and identified in the foreign registration.

 

The proposed amendment to the identification cannot be accepted because the wording “metal sliding and hook-in ladders” and “metal guide rails” refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

The applicant may clarify by amending to the following, if accurate: “Furniture fittings, namely, metal sliding and metal hook-in hanging ladders” and “Metal guide rails for drawers and suspended filing frames” in International Class 020.

 

The wording “roller shutters” is unacceptably indefinite as to the material composition of the goods, the type of goods that the applicant produces and the intended use or purpose for the goods. The applicant may clarify by amending to the following, if accurate: “Roller shutters, namely, {specify goods, e.g., interior metal shutters, metal rolling window shutters}” in International Class 006.

 

The wording “sliding screens” is unacceptably indefinite as to the material composition of the goods or their intended use or purpose. In its correspondence, the applicant indicates that the actual good type intended to be described by this language is “essentially the front plate of a drawer” and the applicant provides a page from a brochure to illustrate its intended meaning for this language. Due to the fact that the goods appear to be parts of drawers, the applicant must clarify by amending to the following, if accurate: “Drawer unit faces comprised of sliding screens” in International Class 020.

 

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

 

The proposed amendment to the identification cannot be accepted because the wording “shelving components” refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

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.

 

 

International Class 020

 

The following wording in the identification of goods in the U.S. application is unacceptable because it exceeds the scope of the goods in the foreign application or registration:  “bed rails, non-metal bathtub rails; footrests; shelving components and parts thereof, namely, pull-out shelf extensions; non-metal sliding and hook-in ladders.”  See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Therefore, applicant must satisfy one of the following:

 

(1)     Amend the identification of goods in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)     Delete the Trademark Act Section 44 basis for the goods beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods.

 

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

 

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §806.02.  If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).  If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

The applicant may clarify by amending to the following, if accurate: “Metal hand rails, namely, bed hand rails and bathtub hand rails” in International Class 006 or “Non-metal hand rails, namely, bed hand rails and bathtub hand rails,” “Non-metal foot rails with supports, namely, footrests,” “Furniture fittings, namely, metal and non-metal sliding and hook-in hanging ladders” and “Metal and non-metal guide rails for drawers and suspended filing frames for hanging file racks” in International Class 020.

 

International Class 021

 

The following wording in the identification of goods in the U.S. application is unacceptable because it exceeds the scope of the goods in the foreign application or registration:  “Appliances …for household use.”  See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Therefore, applicant must satisfy one of the following:

 

(1)     Amend the identification of goods in the U.S. application to correspond to the goods identified in the foreign application or registration, ensuring that all goods beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)     Delete the Trademark Act Section 44 basis for the goods beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods.

 

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

 

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §806.02.  If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods to which that basis applies.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).  If some or all of the goods are covered by more than one basis, this must also be expressly stated.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

 

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

 

International Class 006

 

Metal fittings for use in windows, doors and furniture, namely, Connecting bolts, Transverse nut bolts, Expanding sleeves and inset sleeves for affixing nuts and bolts, Shelf connectors namely, metal shelf brackets, Corner connectors for doors namely,  metal hinges, Metal form connecting angles, Headboard and footboard connectors, namely, metal brackets, Metal door latches, Metal latch bars, Meal Knobs and Metal drawer pulls, Metal locks, Metal lock parts, namely, lock and cylinder olives and lock cases; Roller shutters, namely, interior metal shutters and metal rolling window shutters; Metal hand rails, namely, bed hand rails and bathtub hand rails.

 

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; Non-metal hand rails, namely, bed hand rails and bathtub hand rails; Non-metal foot rails with supports, namely, non-metal footrests; Non-metal hinges and parts for all of the aforementioned goods; Inlay bases, namely, inlay for furniture; Drawer dividers; Non-metal compartment dividers, namely, dividers for drawers; Compartment bases, namely, drawers; Non-metal locks, Non-metal shelving; Metal and non-metal guide rails for drawers and suspended filing frames for hanging file racks; Drawer locking system comprised of drawer locks; Worktops; Furniture fittings, namely, metal and non-metal sliding and hook-in hanging ladders; Tie and belt holders, 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; Non-metal ladders and step ladders; Drawer unit faces comprised of sliding screens.

 

 

 

International Class 021

 

Containers for household and kitchen use not comprised of precious metals or coated therewith.

 

 

For assistance with identifying and classifying goods 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.

 

Although identifications of goods may be amended 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.

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.  Kean/

Trademark Attorney, Law Office 113

U.S. Patent & Trademark Office

Phone 571-272-8854

Fax: 571-273-8854

 

 

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.