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(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

Informalities

1. Color Claim Required

Applicant must submit a color claim, as color is a feature of the mark. Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). Generic color names must be used to identify the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Therefore, applicant must provide the required color claim. The following is suggested, if accurate:

The colors blue, black, and white are claimed as a feature of the mark.

TMEP §807.07(a)(i).

2. Description of the Mark Statement Required

A mark with design elements and color must precisely specify each of the words and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:

The mark consists of the wording “PETER PIPER’S PLUMBING” in black over the wording “DRAIN CLEANING SERVICE” in black. Starting from the letter of all of the prior wording and extending underneath and up the right side of the wording and ending underneath the letter “G” in “PLUMBING” is a [SPECIFY THE DESIGN ELEMENT, E.G., PIPING FORMING AN AMPERSAND ON THE LEFT SIDE OF THE WORDING, ETC.]. In the piping is the wording “WE FIX PICKLED PIPES!” in white.

3. Requirement for a Disclaimer

Applicant must disclaim the descriptive wording “PLUMBING DRAIN CLEANING SERVICE” apart from the mark as shown. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

The term “PLUMBING” means “The system of pipes, tanks, fittings, and other apparatus required for the water supply, heating, and sanitation in a building.” See the enclosed dictionary definition. The term “PLUMBING” merely describes a feature of the services, namely, what is being fixed.

The term “DRAIN CLEANING” refers to cleaning drains. See the enclosed printout from the applicant’s own website. The term “DRAIN CLEANING” merely describes a feature of the services, namely, what is cleaned and what is done to the drain.

The term “SERVICE” means “Assistance or advice given to customers during and after the sale of goods.” See the enclosed dictionary definition. The term “SERVICE” merely describes a feature of the services, namely, that they consist of assistance given to customers.

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP §1213. A disclaimer does not require removal of the element being disclaimed or otherwise affect the appearance of the applied-for mark. See TMEP §1213.10.

Applicant should submit the following standardized format for a disclaimer:

No claim is made to the exclusive right to use “PLUMBING DRAIN CLEANING SERVICE” apart from the mark as shown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

4. Identification and/or Classification of Goods/Services

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

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

The identification is indefinite and must be clarified.

Applicant may adopt the following identification of goods/services, if accurate. See TMEP §1402.01. The suggested revisions are highlighted or in capital letters.

“Plumbing SERVICES; drain cleaning SERVICES,” in International Class 37.

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services. Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date. 37 C.F.R. §2.85(e)(1); TMEP §1402.14. However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 37 C.F.R. §2.85(e)(2).

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14.

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

Examiner’s Amendment Recommended - Only If Applicable

Examiner’s Amendments cannot be issued for partial amendments. However, if all of the outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application. Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.

Questions Regarding This Office Action

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. §§2.62(c), 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.

Responding to Office Action

The USPTO applies the following legal authorities when processing a trademark and/or service mark application:

The Trademark Act of 1946, as amended
The Trademark Rules of Practice, as amended
Precedential court and Trademark Trial and Appeal Board decisions
The USPTO’s Trademark Manual of Examining Procedure (TMEP), as periodically updated
The USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP), as periodically updated

See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110.

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.uspto.gov/trademarks/law/index.jsp. The TMEP is available online at http://www.uspto.gov/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.uspto.gov/trademarks/process/appeal/index.jsp.

Please note that applicant must explicitly address all issues raised in this Office Action. If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal. To respond to requirements/informalities the applicant must specifically request that changes to the record be made.

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.uspto.gov/teas/index.html. TO RESPOND TO THIS LETTER VIA TEAS: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

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.

Applicant should provide a current telephone number with its response to expedite processing. TMEP §302.03(a).

If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance 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).

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

/Michael A. Wiener/

Trademark Attorney

Law Office 108

(T): (571) 272-8836

E-Mail (unofficial correspondence only):

michael.wiener@uspto.gov