Priority Action

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.

ISSUE/MAILING DATE:

OFFICE SEARCH: The trademark examining attorney has searched the USPTO’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).

ISSUES APPLICANT MUST ADDRESS: On July 16, 2010, the trademark examining attorney and Steve T. Tsai discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

Identification of Goods—Clarification Required

The identification of goods must be clarified because it is too broad and include goods in multiple international classes. See TMEP §§1402.01, 1402.03.

Applicant’s goods are currently identified as follows:

health & personal care products such as cervical neck traction cushions, herb grinders, herbal ceramic vaporizers; home & garden products such as flashlights, gas range lighters, oven lighters, fireplace lighters, voltage converter transformers, battery chargers, laser pointers, laser and non-laser garage parking sensors and assists, individually and as a system, security cameras, solar and non-solar powered water pumps for watering plants, plant pots, portable and non-portable electrical power inverters/chargers for home and office use; portable electrical power inverters/chargers for use in automobiles; industrial & scientific products; office products & supplies; sports & outdoor products such as BB guns, gun sights, laser gun sights, holographic gun sights, gun sight mounts and stabilizers, gun scopes, compasses; home improvement tools and hardware; toys & games such as remote control helicopters [no International Class specified]

First, the identification is indefinite and must be clarified because it includes the open-ended wording “such as.” The identification must be specific and all- inclusive. Therefore, this wording should be deleted and replaced with “namely.” See TMEP §§1402.01, 1402.03(a). This wording must be followed with a specific listing of goods that are within the scope of the original identification.

Second, although applicant has paid the processing fees for only one international class, the identification refers to goods in at least ten classes. For example, as shown in the suggested identification, below, the identification includes goods in Class 9 (e.g., electricity converters, laser pointers, electronic sensors); Class 11 (e.g., flashlights, lighters for cooking apparatus); Class 13 (e.g., bb guns and gun sight mounts); Class 21 (e.g., non-electric grinders and plant pots); and Class 28 (e.g., remote control toy helicopters.) Therefore, applicant must amend the application to limit the goods in only one class only or must amend the application to add additional classes.

Third, the following wording must be clarified because the nature of the goods is not sufficiently explicit:

“cervical neck traction cushions”—Applicant must specify whether the goods are for medical use, in which case they are classified in Class 10, or for non-medical use, in which case they are in Class 21;
“herb grinders”—Applicant must specify whether the goods are power-operated (Class 9) or hand-operated (Class 21);
“herbal ceramic vaporizers”--Applicant must specify the vaporizers are power-operated (Class 11) or non-electric (Class 21);
“laser and non-laser garage parking sensors and assists, individually and as a system”—Applicant must clarify whether the goods are electronic sensors in Class 9. For example, applicant may adopt the following wording, if accurate: “electric or electronic sensors for sensing vehicle position in order to assist with garage parking, both with laser pointers and without laser pointers,” in International Class 9;
“solar and non-solar powered water pumps for watering plants”—Applicant must specify whether the pumps are electric pumps in Class 7;
“portable and non-portable electrical power inverters/chargers for home and office use; portable electrical power inverters/chargers for use in automobiles”—Applicant must specify what the chargers are for, e.g., battery chargers, in Class 9;
“industrial & scientific products”—Applicant must specify the common commercial name of the goods and classify them appropriately; this wording could include a broad range of goods in multiple international classes;
“office products & supplies”—Applicant must specify the common commercial name of the goods and classify them appropriately; this wording could include a broad range of goods in multiple international classes;
“bb guns”—Applicant must clarify whether the goods are air guns, in Class 13;
“gun sights, laser gun sights, holographic gun sights”—Applicant must specify whether the sights are telescopic gun sights (Class 9) or non-telescopic gun sights (Class 13);
“home improvement tools and hardware”--Applicant must specify the common commercial name of the goods and classify them appropriately; this wording could include a broad range of goods in multiple international classes;

Applicant may adopt any or all of the following identification, if accurate:

Class 6: Metal hardware, namely, {specify Class 6 goods, e.g. nuts, washers}

Class 7: Power-operated herb grinders; solar and non-solar powered electric water pumps for watering plants; home improvement tools, namely, {specify Class 7 goods, e.g., power-operated saws}

Class 8: Home improvement tools, namely, {specify Class 8 goods, e.g., hand-operated saws}

Class 9: voltage converter transformers; battery chargers; laser pointers; electric or electronic sensors for sensing vehicle position in order to assist with garage parking, both with laser pointers and without laser pointers; security cameras; portable and non-portable electrical power inverters and battery chargers for home and office use; portable electrical power inverters and battery chargers for use in automobiles; scientific products, namely, {specify Class 9 goods, e.g., pipettes}; telescopic gun sights; telescopic laser gun sights; telescopic holographic gun sights; gun scopes; compasses

Class 10: Cervical neck traction cushions, for medical use;

Class 11: Electric ceramic vaporizers for herbal infusions; flashlights; gas range lighters, oven lighters, fireplace lighters

Class 13: Air guns, namely, BB guns; non-telescopic gun sights for firearms; non-telescopic laser gun sights; non-telescopic holographic gun sights; firearm attachments, namely, gun sight mounts and stabilizers

Class 16: Office products and supplies, namely, {specify Class 16 goods, e.g., paper, pens

Class 20: Cervical neck traction cushions, not for medical use; non-metal hardware, namely, {specify goods, e.g., plastic nuts}

Class 21: Hand-operated herb grinders; ceramic vaporizers for herbal infusions, sold empty; plant pots

Class 28: Remote control toys, namely, helicopters

Scope Advisory

Identifications of goods or services can be amended only to clarify or limit the goods or services; adding to or broadening the scope of the goods or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods or services that are not within the scope of the goods or services set forth in the present identification.

Identification Manual

For assistance with identifying and classifying goods or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Multiple-Class Application Requirements

If applicant adds any international classes to this application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods/services by international class;

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional international class of goods and/or services, applicant must submit:

a. Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

b. One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

c. A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

d. Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

Specimen of Use—Clarification Required

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

In this case, the nature of the specimen is not clear from either the photograph or description of the specimen. The applicant has indicated in discussion with the examiner attorney that the specimen is a gun sight. However, as discussed above, telescopic gun sights are in Class 9, while non-telescopic gun sights are in Class 13. Therefore, it is not clear whether the specimen is acceptable for Class 9 or Class 13. Therefore, applicant must confirm the nature of the product shown in the specimen, specifically, whether it is a telescopic gun sight or non-telescopic gun sight.

Assistance

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

/April A. Hesik/

April A. Hesik

Examining Attorney, Law Office 113

Tel: (571) 272-4735

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.