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: 11/25/2009

 

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.

 

POTENTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

The filing date of pending Application Serial No. 77435433 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant must respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

Applicant’s goods are identified as follows:

 

            Class 11:    Faucets; toilets; bathtubs; toilet seats; bidets; urinals; pedestals; namely, sink pedestals and lavatory pedestals; bath and plumbing fixtures; namely, shower heads, water diverters for showers and baths, bath spouts, and drains (standard and pop-up) for sinks, lavatories, showers and bathtubs;

 

            Class 20:    Furniture, namely, bathroom vanities, bathroom cabinets, medicine cabinets, mirrored cabinets, kitchen cabinets, cabinets, storage racks, shelving, display units, wall units, mirrors, bathroom and shaving mirrors, shaped cultured marble for use as a countertop, vanity top or tabletop; furniture parts, namely, countertops; non-metal cabinet door catches; and

 

            Class 21:    Bathroom accessories, namely, soap dispensers, toilet paper holders and dispensers, tissue holders, towel bars, towel rings, towel holders and toothbrush holders.

 

Goods in International Class 11

The wording “DRAINS (STANDARD AND POP-UP) FOR SINKS, LAVATORIES, SHOWERS AND BATHTUBS” in the identification of goods contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  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).”  TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. 

 

Applicant may change this wording to “standard and pop-up bath drains for sinks, lavatories, showers and bathtubs,” if accurate.  See TMEP §1402.01.

 

Goods in International Class 20

The identification of goods in International Class 20 is acceptable as filed.

 

Goods in International Class 21

The wording “TISSUE HOLDERS” in the identification of goods is indefinite and must be clarified to specify the type of tissue, e.g., toilet tissue, facial tissue, etc.  See TMEP §1402.01. 

 

Applicant may change this wording to “facial tissue holders,” if accurate.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, in its entirety, if accurate [the examining attorney’s suggestions appear in bold]:

 

            Class 11:    Faucets; toilets; bathtubs; toilet seats; bidets; urinals; pedestals; namely, sink pedestals and lavatory pedestals; bath and plumbing fixtures; namely, shower heads, water diverters for showers and baths, bath spouts, standard and pop-up bath drains for sinks, lavatories, showers and bathtubs;

 

            Class 20:    Furniture, namely, bathroom vanities, bathroom cabinets, medicine cabinets, mirrored cabinets, kitchen cabinets, cabinets, storage racks, shelving, display units, wall units, mirrors, bathroom and shaving mirrors, shaped cultured marble for use as a countertop, vanity top or tabletop; furniture parts, namely, countertops; non-metal cabinet door catches; and

 

            Class 21:    Bathroom accessories, namely, soap dispensers, toilet paper holders and dispensers, facial tissue holders, towel bars, towel rings, towel holders and toothbrush holders.

 

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.

 

ID Manual Online

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.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

/Amy L. Kertgate/

Law Office 113

Trademark Examining Attorney

Office: 571-272-1943

 

 

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. 77838614) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/25/2009 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=77838614&doc_type=OOA&mail_date=20091125 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 11/25/2009 (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.