United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79276199
Mark: STING
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Correspondence Address:
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Applicant: Van Wijhe Beheer B.V.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1508466
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Summary of Issues that the Applicant Must Address
1) Amended Identification of Goods is Required
2) United States Attorney Must be Appointed
AMENDED IDENTIFICATION OF GOODS IS REQUIRED
A. International Class 1
B. International Class 2
The wording “anticorrosion agents,” “dyes,” “mordants,” and “conversion coatings (paints)” in the identification of goods is indefinite and must be clarified because additional information is required about the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The applicant must also clarify whether the “drying agents” are for “paints, pigments, and colorants,” or if the applicant intended to identify these goods as “drying agents for paints; pigments; colorants.” The use of semi-colons designates separate and distinct goods.
The applicant may adopt the following amended identification of goods, if accurate:
International Class 1: Chemical products for industrial purposes, namely, {specify the common commercial names of the products and their field of use}; chemical products as raw materials, namely, {specify the common commercial names of the products and their field of use}; chemical substances, chemical materials, chemical preparations and natural elements, namely, {specify the common commercial names of the products and their field of use}; {specify type of chemical compositions, i.e., waterproofing} chemical compositions for the use in the manufacture of cosmetic products and paints; chemical additives for the use in the manufacture of fabrics; chemical products as a raw material with an antibacterial effect to be used as additive for paints, cosmetic products, and cleaning products.
International Class 2: Paints, varnishes, lacquers; anticorrosion agents for {specify field of use}; wood preservatives; {specify type of dyes} dyes; {specify type of mordants} mordants; natural raw resins; paint thinners; paints, namely, conversion coatings; drying agents for paints; pigments; colorants.
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.
UNITED STATES ATTORNEY MUST BE APPOINTED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
SEARCH RESULTS
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).
ASSISTANCE
RESPONSE TO OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action.
/Tina L Snapp/
Examining Attorney
Law Office 116
571-272-9224
Informal Email Tina.Snapp@uspto.gov
RESPONSE GUIDANCE