Offc Action Outgoing

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: 9/14/2009

 

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 Results

 

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).

 

Partial Abandonment Advisory

 

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application:  interior and exterior paints and coatings, interior and exterior latex enamels for metal, wood and concrete surfaces, recycled paints and coatings.  The application will then proceed with the remaining goods and/or services only.  37 C.F.R. §2.65(a).

 

Identification of Goods

 

The current wording used to describe the goods needs clarification because the wording is indefinite.  In particular, the term “coatings” is too broad since it can include items in other classes. Since it may be separated out from the specific language of this ID, the entire ID “paints and coatings” has been deleted from the ID Manual.

 

Applicant should use semicolons (;) to separate disparate goods/services.  Misuse of the semicolon may result in further confusion and ambiguity and therefore, further required amendments.  The comma (,) should be used to separate lists of goods in a category, generally following the prefaces “namely,” “consisting of,” “featuring,” or comprised of,” etc.

 

Applicant may adopt the following identification of goods, if accurate (please note required changes in bold type; applicant should pay particular attention to language removed by the examining attorney): 

 

International Class 002 – “interior and exterior paints and exterior surface protective coatings; paint thinners; paint pigments; interior and exterior latex enamel paints for metal, wood and concrete surfaces; stains for exterior wood, masonry, concrete and metal surfaces; paint primers and sealer coatings for use on drywalls, plaster and masonry surfaces; coatings in the nature of acrylic flat finish and acrylic low sheen finish for exterior wood, metal, hard board, stucco, brick, concrete and fiber cement board; and recycled paints and coatings, namely, (_____specify types, e.g. coatings in the nature of industrial sealants for waterproofing and surface hardening, coatings used for furniture finishing, coatings, namely, stains and clear finishes for exterior and interior use on a variety of substrates).”  

TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services 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.

 

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.

 

Response Guidelines

 

The statutory period for response to an examining attorney’s Office action is six months. 15 U.S.C. §1062(b); 37 C.F.R. §2.62. The examining attorney has no discretion to shorten or extend this period. The applicant must file a response within six months of the mailing date of the Office action. TMEP §711.

 

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.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the 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).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

/Benjamin U. Okeke/

U.S. Patent & Trademark Office

Law Office 112

600 Dulany St, Alexandria, VA 22314

(571) 270-1524

(571) 270-2524 Fax

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77755248) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 9/14/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77755248&doc_type=OOA&mail_date=20090914 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 9/14/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.