UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS

 

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.

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable because it includes indefinite wording and some of the wording is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

The wording communications equipment is overly broad and the applicant must indicate the common commercial names of the equipment.  Communications equipment, refuge chambers, sensors and proximity detectors are properly classified in International Class 9.  The applicant must clarify the goods and move them to the appropriate class.

 

The wording “props for roof support, reinforcing materials for roof support, cribs for roof support,” “overcasts, undercasts,” and “barricades” is indefinite.  The applicant must indicate the common commercial names of the “materials.”  Further, these goods could be classified in more than one international class.  If these mine construction materials are made of metal, they would be properly classified in International Class 6 and if they are non-metal they would be properly classified in International Class 19.  The applicant must specify the material composition of the goods.

 

The wording “CO2 scrubbers” appear to be “gas scrubbers” which would be classified in International Class 11.  The wording “stoppers” and “CO2 curtains” is unclear and the examining attorney is unable to determine the nature of the goods and offer alternative language.  The applicant must either clarify the nature of the goods or delete this wording from the identification.

 

Applicant may substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 6

Metal mine construction equipment, namely, metal props for roof support, reinforcing materials, namely, <indicate common commercial names, e.g.; metal roofing panel, metal roofing tiles> for roof support, metal cribs for roof support; metal mine overcasts, undercasts and barricades for the mining industry

 

INTERNATIONAL CLASS 9

Mining equipment, namely, refuge chambers, communication equipment for mines, namely, <indicate common commercial names, e.g.; digital signal processors, computers>, <specify type, e.g.; electronic proximity> sensors, and proximity detectors for the mining industry

 

INTERNATIONAL CLASS 11

Gas scrubbers, namely, CO2 scrubbers for the mining industry

 

INTERNATIONAL CLASS 19

Non-metal mine construction equipment, namely, non-metal props for roof support, reinforcing materials, namely, <indicate common commercial names, e.g.; non-metal roofing panels, non-metal roofing tiles> for roof support, non-metal cribs for roof support; non-metal mine overcasts, undercasts and barricades for the mining industry

 

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.

 

If applicant adopts the suggested amendment of the identification of goods, then applicant must add three international classes and amend the classification to International Classes 6, 9, 11 and 19.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

MULTIPLE CLASS APPLICATIONS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)        DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)        STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

 

(d)        VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods, the specimens of record is acceptable for International Classes 6, 9, 11 and 19.  Applicant must submit additional specimens if different international classes are added to the application.

 

DISCLAIMER

 

Applicant must disclaim the descriptive wording “WORLDWIDE” apart from the mark as shown because it merely describes the goods.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

WORLDWIDE means “Involving or extending throughout the entire world.”  See attached definition.  This term merely describes the scope of the applicant’s goods specifically, that they are available throughout the world.  Therefore, this term merely describes a feature of the goods and it must be disclaimed.

 

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 “WORLDWIDE” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  TMEP §§1213, 1213.10.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Barbara Brown/

Trademark Examining Attorney

Law Office 116

571-272-9134

barbara.brown@uspto.gov (informal queries only)

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.