UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/561572

 

                        Final Refusal

 

The applicant’s disclaimer, claim of prior registration, and substitute specimen are accepted.

 

The refusal to register is continued and made final, however, because the identification of goods remains unacceptable as indefinite.

 

Identification of Goods

 

The current wording used to describe the goods needs clarification as set forth in detail below.  TMEP §1402.01.

 

            Class 17

 

This class is acceptable as written.

 

            Class 19

 

This class is acceptable as written.

 

            Class 20

 

The applicant states that “tree wrap” has been accepted in several of its copending applications and registrations.  The applications and registration cited by the application, however, do not support this conclusion.  Only in Ser. No. 78/405567 is this wording accepted without more.  In each other case, additional wording has been added.  Moreover, the goods have been placed in Class 17, rather than Class 20.  The applications and registrations treat this item in the following ways:

 

Serial No. 76/595653:  “plastic film permeated with insecticide for tree wrap,” in International Class 17.

 

Serial No.: 75/610382:  “protective plastic wrap for trees,” in International Class 17.

 

U.S. Reg. No. 1477686:  “adhesive tape use as a protective tree wrapping, in International Class 17.”

 

The requirement for a more definite identification of “tree wrap” therefore is continued.

 

Further, while the applicant properly has moved its underground sprinkler systems to Class 17, it has left the language originally objected to in Class 20.  The applicant should note that “plumbing pipes made of plastic” belong in Class 17, while “non-metal water pipes” belong in Class 19.  The requirement for a more definite identification for “irrigation pipes” is continued.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Responding to a Final Refusal

 

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  tree wrap, irrigation pipes for underground sprinkler systems.  The application will proceed forward for the remaining goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Doritt Carroll/

Trademark Examining Attorney

Law Office 116

Phone:  (571) 272-9138

Fax:  (571) 273-9138

www.gov.uspto.report/teas/index.html

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.