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. 79284349
Mark: DCK
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Correspondence Address: |
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Applicant: JIANGSU DONGCHENG POWER TOOLS Co.,LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1527759
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).
The referenced application 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.
SEARCH OF OFFICE’S DATABASE OF 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 that applicant must address:
IDENTIFICATION OF GOODS REQUIREMENT
Particular wording in the identification of goods, as indicated in bold below, is indefinite and must be clarified to make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).
In a Trademark Act Section 66(a) application, classification of goods may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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 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).
Thus, any modification to this wording must identify goods in International Classes 007, 008 and 009 only, the classes specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording in International Classes 007, 008 and 009, if accurate:
International Class 007:
Lawnmowers (machines); shearing machines for animals; saw blades being parts of machines;
electromechanical food preparation machines, namely, shredders, mixing machines; electric wood routers; packaging machines; electric food processing machines, for household purposes, namely, electric
fruit presses, electric food blenders; pharmacy processing machines, namely, drug pulverizers; polishing machines for polishing glass; concrete vibrators (machines); electric marble cutters;
elevating apparatus, namely, {identify specific apparatus by common commercial name}; hoods being parts of machines; drilling bits for machine; circular saws; power operated grinding wheels for machines; router bits for machines; threading machines; chain saws; cutting machines; metal drawing machines; knives being parts of machines; hand-held
tools other than hand-operated, namely, electric hand-held drills, electric power-driven impact drills, electric
screwdrivers, electric mixers, electric power-driven wrenches, electric power-driven diamond core drills, electric power-driven diamond drills with water source, electric rotary hammers, electric demolition hammers, electric percussion hammers, electric power scrapers and
excavators, electric reciprocating saws, electric table saws, electric band saws, electric chain saws, electric circular saws, electric jig saws, electric mitre saws, electric cut-off machines,
electric angle grinders, electric disc grinders, electric straight grinders, electric bench grinders, electric grinders, electric sanders, electric belt sanders, electric disc polishers &
sanders, electric die grinders, electric grinders with tungsten steel saw blade, electric shears, electric groove cutters, electric trimmers, electric plate jointers, electric wood routers, electric
planers, planing machines, industrial electric blowers for dust removing not for ventilation or air conditioners, power operated blowers, electric lawn croppers, electric fence
croppers, electric secateurs and pruners, electric hedge trimmers, electric grass shears, grinding and polishing machines, hinge boring bits, FRP hole saws, HSS hole saws,
electric weld joint bevellers, drywall sanders, shear wrenches, electric impact drivers, electric driver drills, electric pipelayers, electric dust-free saws, airless high-pressure spraying units,
hot air guns, magnetic drills, electric adhesive spray guns, electric caulk guns, hot glue guns, cordless sabre saws, cordless blind riveting guns, cordless screw guns, cordless pruners, cordless
power tools, and parts therefore, namely, {indicate specific parts by common commercial name}; hand-held pneumatic tools, namely, pneumatic nail guns, pneumatic drills, pneumatic
sanders, pneumatic screwdrivers, pneumatic grinders, pneumatic polishers, pneumatic hammers, pneumatic shears, pneumatic air blow guns, and parts therefore, namely, {indicate
specific parts by common commercial name}; spray guns for paint; spray-paint machines; brushes being parts of machines; carbon brushes being parts of machines; stators being parts of machines;
generators {indicate type, e.g., gas-operated power generators}; electric motors other than for land vehicles; compressed air pumps; pumps {indicate type of
pumps} (machines); air compressors; grease rings being parts of machines; transmissions for machines; gears other than for land vehicles; mechanical seals being parts
of machines; bearings being parts of machines; belts for machines; electric welding apparatus, namely, {indicate specific apparatus by common commercial name}; electric welding
machines; vacuum cleaners; electric cleaning machines and apparatus for garbage disposal, namely, {indicate specific apparatus by common commercial name};
high pressure washers; electric machines and apparatus for wax-polishing, namely, {indicate specific apparatus by common commercial name}; sewage pulverisers; electric shoe
polishers; electric machines and apparatus for polishing, namely, {indicate specific apparatus by common commercial name}; metalworking machines tools; electric motors other than for land vehicles {delete duplicate ID}; electrically-operated brushes, being parts of machines; garbage disposal units; 3D
printers
International Class 008:
Hand tools, namely, emery grinding wheels; nail clippers, electric or non-electric; hand-operated hand tools, namely, emery grinding wheels, wrenches, spanners, pliers, hand drills, chisels, hammers, screwdrivers, files, knives, bits, cutting tools, scraping tools, bush hammers, pick hammers, shovels, spades, riveters, three-jaw bearing pullers, graving tools, saw blades, scissors, shears; handles for hand-operated hand tools; razors, electric or non-electric; hair clippers for personal use, electric and non-electric; beard clippers; depilation appliances, electric and non-electric; tweezers; electric hair clippers; manicure sets, electric; hand-operated cutting tools; saw blades being parts of hand tools
International Class 009:
Measuring tools, namely, {identify specific tools by common commercial name}; carpenters' rules; marking gauges for joinery purposes; verniers; micrometers gauges; signal lanterns; monitoring apparatus, other than for medical purposes, namely, {indicate specific apparatus by common commercial name}; measuring apparatus, namely, laser levels, surveyors' levels, line lasers, laser range finders, laser direction instruments, bevels, levels, distance measuring apparatus, altimeters, levelling staffs, clinometers; camera tripods; probes for scientific purposes; electric wires and cables; armatures for use in electrical apparatus; commutators; electric switches; electric regulating apparatus, namely, {indicate specific apparatus by common commercial name}; electric junction boxes; electric control panels; electric resistances; electric connections; electricity conduits; plugs, sockets and other electric connecting attachments, namely, {indicate specific electric connecting attachments by common commercial name}; capacitors; protection devices for personal use against accidents, namely, protective helmets, protective masks, safety belts other than for vehicle seat and sports equipments, dust protective goggles and masks, safety goggles, clothing for protection against accidents, irradiation and fire; personal security alarms; eyeglasses; electric batteries; battery chargers; electric accumulators
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.
The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
APPLICANT ENTITY INFORMATION REQUIREMENT
The entity name includes Ltd., Co. and the entity type is a Corporation. Per Appendix D, a Ltd or Ltd., Co. of China is either a Limited Company or Limited Liability Company. Therefore, the entity type requires clarification. See TMEP § 803.03(i).
Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.
If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).
If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.
U.S.-LICENSED ATTORNEY REQUIREMENT
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
How to respond. Click to file a response to this nonfinal Office action.
/Justin Severson/
Justin Severson
Examining Attorney
Law Office 111
571-272-6893
justin.severson@uspto.gov
RESPONSE GUIDANCE