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:

 

 

INTRODUCTION AND SEARCH

The referenced application has been reviewed by the assigned trademark examining attorney.  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 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.

 

 

IDENTIFICATION AND CLASSIFICATION OF THE GOODS

Applicant identifies and classifies the goods as follows:

 

Class 8:

Spanners; screwdrivers; adjustable spanners; wrenches; nail extractors; nippers; pliers; cutting pliers; pincers; shovels; gardening trowels; snow shovels; gardening scissors; metal-cutting scissors (tin shears) ; nail clippers; nail scissors; Japanese grip scissors (Japanese thread clippers); scissor blades; punches; scissors; woolen shears; hair cutting scissors; kitchen knives; straw cutters; folding knives; glass cutters; paring knives; scaling knives; paring irons; tatami mat choppers; carving knives; drawing knives; table knives; fire pans for carrying live charcoal (Juno); fireplace bellows (hand tools); fire tongs (hibashi); fire tongs; palette knives

 

Class 20:

Containers for transport, not of metal; curtain fittings; metal-substitute plastic fasteners; nails, wedges, nuts, screws, tacks, bolts, rivets and casters, not of metal; washers (not of metal, not of rubber or vulcanized fiber); bottle-shaped industrial packaging containers of plastics; other industrial packaging containers of wood, bamboo or plastics; shopping baskets; tool boxes, not of metal (empty); furniture; arranging and housing cases; storage drawers; bookstands; flower-pot pedestals; worktables

 

Class 21:

Cosmetic and toilet utensils; tray for arranging kitchen gadgets; other kitchen utensils and containers, not including gas water heaters for household use, nonelectric cooking heaters for household purposes, kitchen worktops and kitchen sinks; cleaning tools and washing utensils; cinder sifters for household purposes; gotoku (Trivets for Japanese charcoal heaters for household purposes); coal scuttles; Japanese charcoal extinguishers (Hikeshi-tsubo); flower pots; hydroponic plant pots for home gardening; watering cans; nonelectric watering devices; gardening water diffuser; shoe brushes; shoe horns; shoe shine cloths; shoe shine sponges and cloths; shoe trees (stretchers)

 

The wording “nail extractors; …; pincers; … (tin shears) ; …(Japanese thread clippers); …; punches; …; straw cutters; …; fire pans for carrying live charcoal (Juno); … (hand tools); fire tongs (hibashi); …; curtain fittings; metal-substitute plastic fasteners; nails, wedges, nuts, screws, tacks, bolts, rivets and casters, not of metal; washers (not of metal, not of rubber or vulcanized fiber); …; other industrial packaging containers of wood, bamboo or plastics; shopping baskets; tool boxes, not of metal (empty); …; arranging and housing cases; storage drawers; …; worktables …Cosmetic and toilet utensils; tray for arranging kitchen gadgets; other kitchen utensils and containers, not including gas water heaters for household use, nonelectric cooking heaters for household purposes, kitchen worktops and kitchen sinks; cleaning tools and washing utensils; …; Japanese charcoal extinguishers (Hikeshi-tsubo); …; nonelectric watering devices; gardening water diffuser; … (stretchers)” shown above in italics in the identification of goods is indefinite and must be clarified because the wording does not satisfy the Office’s requirements for specificity and the nature of the goods is not clear.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Also, the identification of goods contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  TMEP §1402.12.  The USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations.  See id.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

Applicant may adopt one or more of the following amended identifications of the goods, if accurate. Please note that applicant must provide the information described inside brackets:

 

• Electric nail extractors (INT. CLASS 7)

 

• Spanners; screwdrivers; adjustable spanners; wrenches; hand-operated nail extractors; nippers; pliers; cutting pliers; hand-operated pincers; shovels; gardening trowels; snow shovels; gardening scissors; metal-cutting scissors; nail clippers; nail scissors; Japanese grip scissors; scissor blades; hand tools namely, punches; scissors; woolen shears; hair cutting scissors; kitchen knives; straw cutters, namely, scythes; folding knives; glass cutters; paring knives; scaling knives; paring irons; tatami mat choppers; carving knives; drawing knives; table knives; fireplace bellows; fire tongs; palette knives  (INT. CLASS 8)

 

• Paper hole punches (INT. CLASS 16)

 

• Containers for transport, not of metal; curtain fittings, namely, curtain rods, rings, rails, rollers and hooks; non-metal fasteners, namely, nails, wedges, nuts, screws, tacks, bolts, rivets and casters; washers of plastic for [INDICATE use]; bottle-shaped industrial packaging containers of plastics; industrial packaging containers of wood, bamboo and plastics; tool boxes, not of metal, empty; furniture; display cases; storage drawers, namely, chests of drawers; bookstands; flower-pot pedestals; industrial work tables (INT. CLASS 20)

 

• Fire pans for carrying live charcoal, namely, coal scuttles; plastic hand-held shopping baskets; cosmetic and toilet utensils, namely, [INDICATE utensils by common commercial name, e.g., cosmetic brushes, etc.]; trays for domestic purposes for use arranging kitchen gadgets; containers for household or kitchen use; kitchen utensils, namely, splatter screens, serving scoops, ladles and tongs; cleaning tools and washing utensils, namely, cleaning pads, cloths, sponges and brushes for household use; cinder sifters for household purposes; gotoku (Trivets for Japanese charcoal heaters for household purposes); coal scuttles; Hikeshi-tsubo, namely, Japanese fire buckets in the nature of earthenware jars for extinguishing charcoal; flower pots; hydroponic plant pots for home gardening; watering cans; nonelectric watering devices, namely, water troughs; gardening water diffuser, namely, lawn sprinklers; shoe brushes; shoe horns; shoe shine cloths; shoe shine sponges and cloths; shoe trees;  (INT. CLASS 21)

 

If applicant adopts the suggested amendment of the identification of goods, then applicant must amend the classification to the International Class indicated.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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

 

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.

 

 

MULTICLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 that can be viewed online at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least five classes; however, applicant submitted a fees sufficient for only three classes.  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.

 

 

REQUIREMENT FOR INFORMATION

Applicant must explain whether “ASTAGE” and/or “A STAGE” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

CLOSING

If applicant has questions regarding this Office action, please telephone the assigned trademark examining attorney. 

 

/Tracy L. Fletcher/

Trademark Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

tracyfletcher@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.  All informal e-mail communications relevant to this application will be placed in the official application record. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

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.