Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  September 15, 2020

 

International Registration No. 1508466

 

This Office action is in response to applicant’s communication filed on August 24, 2020.  The referenced correspondence has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.  The following requirements are now made FINAL.  See 37 C.F.R. §2.63(b).

 

FINAL REQUIREMENT FOR AN ACCEPTABLE AMENDED IDENTIFICATION OF GOODS

 

A.    International Class 1

 

The wording “chemical products as raw materials, namely, chemical products as raw materials with antibacterial effect; chemical substances, chemical materials, chemical preparations and natural elements, namely, for the use in the manufacture of cosmetic products and paints” in the identification of goods is indefinite and must be clarified because additional information is required about these goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For instance, these goods may be acceptably identified as “antibacterial chemical products for use as raw materials in the manufacture of cosmetic products and paints” and “chemical substances, chemical materials, and chemical preparations for the use in the manufacture of cosmetic products and paints.”  Please note that the nature of “natural elements” is unknown and therefore the proper classification cannot be determined.

 

B.     International Class 2

 

The wording “anticorrosion agents to apply on materials, such as metal, wood and plastic, to prevent it from corrosion” in the identification of goods is indefinite and must be clarified because it is unclear whether these goods are correctly classified in International Class 2.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may acceptably identify these goods in International Class 2 as “anticorrosion agents for coating materials such as metal, wood and plastic to prevent it from corrosion.”

 

The applicant may adopt the following amended identification of goods, if accurate:

 

International Class 1:  Chemical products for industrial purposes, namely, chemical products with antibacterial effect and surfactants for use in the manufacture of paint; antibacterial chemical products for use as raw materials in the manufacture of cosmetic products and paints; chemical substances, chemical materials, and chemical preparations for the use in the manufacture of cosmetic products and paints; antibacterial 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 coating materials such as metal, wood and plastic to prevent it from corrosion; wood preservatives; dyes for use in the manufacture of paint; mordants for use in the manufacture of paint; 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.

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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 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 transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

RESPONSE TO FINAL OFFICE ACTION

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 15, 2020 for

U.S. Trademark Application Serial No. 79276199

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 15, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”