UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 76717864
MARK: NITTO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Nitto Denko Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
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.
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).
Applicant has classified “door mats of metal” in International Class 6; however, the proper classification is International Class 27. Therefore, applicant may respond by (1) adding International Class 27 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “door mats of metal” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with additions and alterations in bold type.
Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 06: Industrial packaging containers of metal not including metal stoppers, lids and caps; upright signboards of common metal; transportable greenhouses of metal for household use for stairs and slopes
CLASS 07: Dynamo brushes; food or beverage processing machines and apparatus, namely, {specify the common commercial name of the goods, e.g., electric food processors}; milk filtering machines; milking machines; semiconductor manufacturing machines and systems comprising {specify the components of the system, e.g., machinery for manufacturing semiconductors}; chemical processing machines and apparatus, namely, {specify the common commercial name of the goods, e.g., sorting machines for chemical processing and separating machines for chemical processing}; adhesive tape dispensing machines; packaging or wrapping machines and apparatus, namely, {specify the common commercial name of the goods, e.g., packaging machines and wrapping machines}
CLASS 11 is definite
CLASS 16 is definite
CLASS 17: Coated plastic film for agricultural use in the nursery; plastic sheeting for agricultural purposes; insulating tapes; electrical insulating materials; non-metal seals, namely, seals for dustproofing and cushioning around speakers and microphones and for soundproofing of clearances around motors and for dustproofing and cushioning around LCDs and for light shielding and dustproofing around LEDs; water-tight, airtight, soundproof and insulation sealing materials for home appliances; water-tight, airtight, soundproof and insulation sealing materials for automobiles; waterproof tapes for buildings; nonslip self-adhesive tapes for stairs and slopes
CLASS 20 is definite
CLASS 27: Door mats of metal [ADDITIONAL CLASS - MOVED FROM CLASS 06]
CLASS 28: Sports equipment, namely, athletic supporters; athletic tape, namely, tape for athletic use; head covers for golf clubs
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
ADVISORY: MULTIPLE-CLASS APPLICATION
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 7 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the stylized wording NITTO.
(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 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). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors blue and red are claimed as a feature of the mark.”
Mark description: “The mark consists of the wording NITTO appearing in blue with the dot on the lowercase I appearing in the color red.”
See TMEP §807.07(b).
CONTACT INFORMATION
/Christine Martin/
Examining Attorney
Law Office 104
(571) 272-1630
christine.martin@uspto.gov
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 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. 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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.