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: 11/26/2014

 

 

INTERNATIONAL REGISTRATION NO. 1200516

 

In the Office action of May 5, 2014, the following issues were raised:  1) refusal to register on the grounds that applicant’s mark is primarily merely a surname under Section 2(e) (4) of The Trademark Act and 2) requirement for an acceptable amendment to the identification of goods in Classes 6 and 8.

 

In its response of October 31, 2014, applicant did not dispute that its mark is primarily merely a surname under Section 2(e) (4) of The Trademark Act.  Rather, applicant sought to overcome the refusal by amending the application to seek registration under Section 2(f) based on acquired distinctiveness based on five years of continuous and exclusive use in commerce that may be regulated by The United States Congress.

 

New Issue # 1—SECTION 2(f) ACQUIRED DISTINCTIVENESS

 

Applicant may amend the application to seek registration on the Principal Register pursuant to Trademark Act Section 2(f) if applicant has used its mark for a significant period of time in commerce that may lawfully be regulated by the United States Congress.  See 15 U.S.C. §§1052(f), 1127; In re Etablissments Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 654 (Fed. Cir. 1985); TMEP §1212.08.  This use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested.  15 U.S.C. §1052(f); TMEP §1212.05.

 

To establish acquired distinctiveness, applicant may rely only on use in commerce that may be regulated by the United States Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999); TMEP §§1010, 1212.08.

 

To amend the application to assert Section 2(f) based on five years’ use, applicant should provide information regarding the length of use of the mark in commerce and/or dates of use, and include the following written statement claiming acquired distinctiveness:

 

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(b); TMEP §§1010, 1212.05(d), 1212.08.  Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

Applicant has provided the written statement claiming acquired distinctiveness supported by a signed declaration.  However, applicant has not provided information regarding the length of use of the mark in commerce and the dates of use. Applicant must provide information regarding the length of use of the mark in commerce that may be regulated by The United States Congress.

 

IDENTIFICATION OF GOODS

 

Class 6

 

The wording “accessories for hand tools, namely, nails, screws, washers, springs, pins, eyelets, metal hooks, metal connective hinges, metal fastening collars, metal rivets and pins and metal cables and wires not for electrical purposes” in the identification of goods is indefinite and must be clarified because  it must be specified that all of the items are made of metal.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Metal accessories for hand tools, namely, nails, screws, washers, springs, pins, eyelets, hooks, connective hinges, fastening collars, rivets and pins, cables and wires not for electrical purposes.”

 

Class 8

 

The wording “non-electric hand tools for use in goldsmithing, silversmithing, and clock making hammers” in the identification of goods is indefinite and must be clarified because the wording “namely, hammers” must be inserted after the term “clock making” to clarify that the non-electric hand tools for use in goldsmithing and silversmithing are hammers.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “”Non-electric hand tools for use in goldsmithing, silversmithing and clock making, namely, hammers”.”

 

Particular wording in the identification in the application is indefinite and must be clarified.  See TMEP §§1402.01, 1904.02(c)(iii).  Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 8 is indefinite and does not appear to describe any goods and/or services in that class:  “storage containers adapted for the aforesaid tools” and “connecting rods and straps and locks and buckles therefor, for fastening the aforesaid storage containers to clothing.”  See TMEP §1904.02(c)(iii). 

 

An acceptable identification of goods and/or services is required in a U.S. application based on Trademark Act Section 66(a).  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01(c).  For Section 66(a) applications, the scope of the identification for purposes of amendment is limited by the international class assigned to the goods and/or services by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  Additionally, an applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any future amendment to the identification must identify goods and/or services within International Class 8 and be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii).  If an applicant amends identification to a class other than that assigned by the International Bureau, the amendment will not be accepted.  TMEP §§1402.01(c), 1904.02(c). 

 

Alternatively, applicant may delete this unacceptable wording from the identification.  See TMEP §1904.02(c)(iii)-(iv).  However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted.  See TMEP §1402.07(e).

 

If applicant believes classification by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration.  TMEP §1904.02(c)(iv), (e)(i)-(e)(ii).  However, filing such a request with the International Bureau is not considered a formal response to this Office action.  See TMEP §1904.02(c)(iv), (e)(iii).  Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).

 

 

 

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

/Lucy Arant/

Trademark Examining Attorney

LO117

571-272-3542

lucy.arant@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/26/2014 FOR U.S. APPLICATION SERIAL NO. 79146008

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/26/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.