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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/30/2018

 

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1334206

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 03/20/2018.

 

In a previous Office action dated 02/23/2018, applicant was required to satisfy the following requirement:  amend the identification of goods in International Classes 1, 6, 7, 9, 11, 12, 20 and 21.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided for International Classes 1, 6, 7, 12, 20 and 21.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney, however, maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• definite amended identification for specific goods in International Classes 9 and 11

 

IDENTIFICATION OF GOODS - THIS PARTIAL FINAL REQUIREMENT APPLIES ONLY TO THE CLASS 9 AND 11 GOODS SPECIFIED THEREIN

International Class 9

The wording “electronic publications, downloadable; computer programs downloadable software” in the amended identification of goods is indefinite and must be clarified because the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication};

 

Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}

 

International Class 11

 

The wording “air deodorising apparatus,” “drying apparatus, namely, air drying for flooded buildings,” “drying apparatus and installations, namely, air drying for flooded buildings” and “heaters for people” in the amended identification of goods is indefinite and must be clarified because the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

air deodorising apparatus, namely, electric air deodorizers;

 

drying apparatus, namely, for use in air drying for flooded buildings;

 

drying apparatus and installations, namely, for use in air drying for flooded buildings;

 

{specify, e.g., water, electric space} heaters for people

 

General Guidelines

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.  See TMEP §1402.04.

 

For the foregoing reasons, the requirement for an acceptable identification for specific goods in International Classes 9 and 11 is maintained and made FINAL.

 

RESPONSE OPTIONS – PARTIAL ABANDONMENT ADVISORY 

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods in classes 9 and 11 to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “electronic publications, downloadable; computer programs downloadable software” in Class 9 and “air deodorising apparatus,” “drying apparatus, namely, air drying for flooded buildings,” “drying apparatus and installations, namely, air drying for flooded buildings” and “heaters for people” in Class 11.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed forward with the currently acceptable goods in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 20, 21, 22 and 25. 

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

/Barbara Rutland/

Examining Attorney

Law Office 101

USPTO

Phone: 571-272-9311

Fax: 571-273-9101

barbara.rutland@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 4/30/2018 FOR U.S. APPLICATION SERIAL NO. 79202997

 

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 4/30/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.