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

 

INTERNATIONAL REGISTRATION NO. 1338366

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS: NO CONFLICTING MARKS

 

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).

 

SUMMARY OF ISSUES:

 

• REQUIREMENT: COMPLETE COLOR CLAIM
• REQUIREMENT: CONCISE MARK DESCRIPTION
• REQUIREMENT: IDENTIFICATION OF GOODS CLARIFICATION

 

REQUIREMENT: COMPLETE COLOR CLAIM

 

The color claim does not identify all the colors in the drawing of the mark.  Specifically, the following colors have been omitted:  white.  A complete color claim must list all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d). 

 

Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.

 

The following color claim is suggested:  “The colors light green and white are claimed as a feature of the mark.”

 

REQUIREMENT: CONCISE MARK DESCRIPTION

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of a stylized white slice of fruit outlined in light green with eight light green triangular shapes in the center forming an overall circular shape above the letters “IPC” in light green stylized font.

 

REQUIREMENT: IDENTIFICATION OF GOODS CLARIFICATION

 

First, the identification of goods is indefinite and must be clarified because some of the wording is too broad making the nature of the goods identified unclear and could include goods in multiple international classes.  Applicant must clarify the identification by specifying the type of goods, in the international class assigned by the International Bureau, as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Second, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application 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., “sash bands for kimono (obi).”  Id.

 

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

 

SUGGESTED IDENTIFICATION

 

Instructions and suggested changes are shown in bold text.  Applicant may adopt the following identification, if accurate: 

 

IC 3: Cleaning, polishing, scouring and abrasive preparations; {specify the type of detergents in International Class 3, e.g., dishwashing, laundry, dish} detergents; detergents for industrial cleaning use, namely, {specify the type of detergents for industrial cleaning use in International Class 3, e.g., detergents for machine dishwashing, laundry detergents, detergents for automobiles}; germicidal detergents; foam {specify the type of foam detergents in International Class 3, e.g., dishwashing, laundry, dish} detergents; detergents for automobiles; detergents for cleaning machines, namely, {specify the type of detergents for cleaning machines, e.g., detergents for machine dishwashing}; detergents for textiles, namely, {specify the type of detergents for textiles, e.g., laundry detergents}; detergents for floors, namely, {specify the type of detergents for floors, e.g., floor stripping and cleaning preparations}; maintenance detergents, namely, {specify the nature of the maintenance detergents, e.g., all-purpose cleaners}; {specify the type of detergents in International Class 3, e.g., dishwashing, laundry, dish} detergents with waxing action; degreasing preparations for use on metal, wood, ceramics, plastics and concrete; polishing wax; {specify the type of wax removers, e.g., floor} wax removers; polishing powder; self-drying liquid {specify the type of liquid polish, e.g., floor} polish; shampoos for carpets; preparations for unblocking pipes, namely, {specify the type of preparations for unblocking pipes, e.g., drain openers}; rust removing preparations; {specify the type of industrial soaps in International Class 3, e.g., non-medicated} industrial soaps; limestone removing preparations for {specify the use or purpose of the limestone removing preparations in International Class 3, e.g., use on household apparatus}

 

IC 7: Machines for cleaning, namely, {specify the type of machines for cleaning, e.g., machines for cleaning surfaces using high pressure water, floor washing machines, clothes washing machines}; floor cleaning machines; cleaning appliances utilizing steam; machines for cleaning of vertical surfaces and windows using high pressure water; wall-scrubbing machines; hot water cleaners, namely, {specify the type of hot water cleaners, e.g., machines for cleaning surfaces using high pressure water, steam cleaning machines}; cold water cleaners, namely, {specify the type of cold water cleaners, e.g., machines for cleaning surfaces using high pressure water}; hot water high pressure washers for cleaning surfaces; cold water high pressure washers for cleaning surfaces; {specify the type of sweeping machines, e.g., road, street} sweeping machines; motorized floor sweepers; walk-behind {specify the type of floor sweepers in International Class 7, e.g., electric} floor sweepers; ride-on {specify the type of floor sweepers in International Class 7, e.g., electric} floor sweepers; sandblasters; hydro-sandblasters; sandblasters being parts of machines; dry vacuum cleaners; wet vacuum cleaners; carpet and armchair cleaning machines; {specify the type of floor scrubber-driers, e.g., automatic} floor scrubber-driers being cleaning machines; electric and manual traction {specify the nature of the manual traction floor scrubber-driers, e.g., electric, automatic} floor scrubber-driers being cleaning machines for cleaning all types of surfaces; chemical and detergent nebulizing and spraying machines; machines, namely, {specify the type of polishers, e.g., floor, power-operated} polishers; self-service hot water {specify the type of washing installations, e.g., vehicle} washing installations; self-service cold water {specify the type of washing installations, e.g., vehicle} washing installations; self-service installations for washing, rinsing and polishing vehicles, in the nature of machines using high pressure water; self-service vacuum cleaning machines for the interior of vehicles; structural parts and replacement parts for all aforementioned machines included in this class, namely, boilers, steam boilers for machines, steam engine boilers; vacuum motors; pressure adapters being parts of machines, namely, {specify the nature of the pressure adapters being parts of machines, e.g., pressure regulators being parts of machines}; wheels and non-marking wheels being parts of machines; ejectors being parts of machines; ejectors to aspirate detergent solution being parts of machines; valves being parts of machines; high pressure and low pressure hoses for water cleaners being parts of machines; flexible hose couplings for machines; discharging hoses being parts of machines; vacuum cleaner hoses; mechanical hose reels for flexible hoses, namely, {specify the nature of the mechanical hose reels for flexible hoses, e.g., power-operated garden hose reels}; boiler tubes being parts of machines; {specify the nature of the lances, e.g., power-operated cleaning machines, namely, lances designed to mechanically remove scale and sludge from secondary side tubesheets in steam generators in nuclear power plants} and lance holders for machines; hydro-brush {specify the nature of the lances, e.g., power-operated cleaning machines}, namely, lances for water cleaners being parts of machines; water tanks and reservoirs being parts of machines; solution and water tanks being parts of machines; dump trays being parts of machines; devices for delivery and mixing of detergents being parts of machines, namely, {specify the type of devices for delivery and mixing of detergents being parts of machines, e.g., electric mixers, industrial mixers}; squeegee blades and rubber blades being parts of machines; emulsion oil squeegee blades being parts of machines; {specify the nature of the squeegees, e.g., squeegee blades} and rubber blades being parts of sweepers and scrubber-driers; foam heads for machines; anti-foam devices being parts of machines, namely, {specify the type of anti-foam devices being parts of machines, e.g., industrial foam cleaning machinery}; anti-foam head attachments for cleaning machines, namely, {specify the type of the anti-foam head attachments for cleaning machines, e.g., foam spreaders}; rotary machine heads for machines; rotating heads for machines; self-adjusting and self-levelling washing and sweeping heads being parts of machines; rotating arms for machines; {specify the nature of the discs for machines, e.g., machine parts}, namely, discs for machines for polishing, washing and de-waxing; standard driver discs being parts of {specify the type of sweepers, e.g., electric floor} sweepers and {specify the type of scrubber-driers, e.g., electric floor} scrubber-driers; junction nozzles for machines, namely, {specify the nature of the junction nozzles for machines, e.g., suction nozzles for vacuum cleaners}; brushes being parts of machines; circular or cylindrical brushes being parts of machines; rotary brushes being parts of machines; roller brushes being parts of machines; {specify the type of filters, e.g., oil, fuel} filters being parts of machines; inlet and outlet {specify the type of filters, e.g., oil, fuel} filters being parts of machines; self-cleaning {specify the type of filters, e.g., oil, fuel} filters being parts of machines; filter bags made of polyester being parts of {specify the type of machines, e.g., vacuum cleaning} machines; fabric {specify the type of filters, e.g., oil, fuel} filters being parts of machines; cartridge {specify the type of filters, e.g., oil, fuel} filters for machines; paper {specify the type of filters, e.g., oil, fuel} filters being parts of machines; {specify the nature of the paper filter bags in International Class 7, e.g., machine parts}, namely, paper filter bags for sweepers and vacuum cleaners; {specify the type of filters, e.g., oil, fuel} filters and stop filter discs being parts of machines; {specify the nature of the paper filter bags in International Class 7, e.g., machine parts}, namely, recycling {specify the type of filters, e.g., oil, fuel} filters for {specify the type of scrubber-driers, e.g., floor} scrubber-driers being cleaning machines; {specify the type of guns in International Class 7, e.g., rivet, hot adhesive, paint spray} guns being parts of machines; {specify the type of guns in International Class 7, e.g., power-operated spray} guns for water cleaners; power-operated spray guns for pressure washing machines; steam-guns being parts of machines; containers being parts of machines, namely, {specify the type of containers being parts of machines, e.g., protective metal containers being parts of gas compressors}; {specify the nature of the tissue roller holders being parts of machines, e.g., machine tool holders}, namely, tissue roller holders being parts of machines; {specify the nature of the pad holders being parts of machines, e.g., machine tool holders}, namely, pad holders being parts of machines; regulators being parts of machines; water purifiers being parts of machines

 

IC 21: Articles for cleaning purposes, namely, {specify the type of articles for cleaning purposes, e.g., cleaning rags, cleaning cloths, cleaning pads}; hand-operated cleaning instruments, namely, {specify the type of hand-operated cleaning instruments, e.g., cleaning sponges, cleaning combs, scraping brushes}; cleaning cloths; cleaning sponges; cleaning pads; dusters for cleaning; glass cleaning implements, namely, {specify the type of glass cleaning implements, e.g., squeegees}; brushes for cleaning, namely, {specify the type of brushes for cleaning, e.g., scrubbing brushes, toilet brushes, dishwashing brushes}; brooms for cleaning purposes; steel wool for cleaning; hand-operated squeegees for cleaning; buckets for cleaning; waste baskets; toilet paper roll dispensers; dispensers for paper towels for household use; soap dispensers; household gloves for cleaning purposes

 

IDENTIFICATION ADVISORIES

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

ADVISORY: RESPONDING TO THIS OFFICE ACTION

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

OFFICE ACTION QUESTIONS: 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. §§2.62(c), 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.

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

P: 571-272-8864

E: tina.brown@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.