Offc Action Outgoing

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:

THIS IS A FINAL ACTION.

This letter responds to applicant’s communication filed on April 13, 2011. Applicant 1) amended the identification of goods which includes goods from applicant’s companion application, namely, Application Serial No. 85077407 pursuant to TMEP §1402.08 and 2) argued against the refusal to register the mark under Section 2(d) of the Trademark Act by amending the identification. Number 1 is not accepted. Number 2 is accepted.

Thus, the requirement for an amended classification and identification of goods is continued and made FINAL.

CLASSIFICATION AND IDENTIFICATION OF GOODS

The requirement for an amended classification and identification is now made FINAL. See37 C.F.R. §2.64(a).

Applicant is highly encouraged to contact the examining attorney regarding an acceptable classification and identification of goods.

After consultation with the Office experts in identification and classification, the following wording is indefinite because the type of grill should be set forth with more specificity, namely:

1. utility trailers for portable grills;

2. carts for grills.

While the examining attorney understands that the grills are a specific type of grill for cooking, the nature of the grills as indicated in the identification may relate to grills for automobiles in International Class 12, grills as cooking utensils in International Class 21, or the specific types of grills for cooking in International Class 11. Thus, for a clear identification, the nature of the type of grill should be set forth.

In addition, the following wording in the identification of goods is indefinite and must be clarified because the wording does not indicate the nature of the type of grill or the grill components, replacement parts and accessories with enough specificity, namely:

3. structural components for grills, namely cart brackets;

4. replacement parts and accessories for grills, namely, wheels, casters and hubcaps.

See TMEP §1402.01.

The examining attorney has consulted the Office identification and classification experts with respect to this wording and the wording has been deemed to be indefinite. In particular, these proposed amendments to the identification cannot be accepted because the wording seemingly refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing or the co-pending application. See 37 C.F.R. §2.71(a). In particular, as worded the cart brackets, wheels, casters and hubcaps appear to identify a component part for a cart and not for a grill per se. Thus, this wording is beyond the scope of the original wording because the wording appears to be a component part of a cart and not a grill.

Identifications can be amended only to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07(a). Therefore, this wording should be deleted from the identification as it seemingly refers to parts for a cart not a grill, or the wording should be further clarified to indicate the nature of the goods as part of the grill.

With respect to number 3, applicant should indicate a comma before and after namely.

Applicant should note that as a general rule structural components and replacement parts for grills are properly classified in the appropriate International Class for that particular grill. However, in general, goods which are grill accessories may or may not necessarily always be a structural component or replacement part for the grill. Thus, these accessories should be classified by common commercial name for the goods. Thus, use of the term accessories in connection with structural components and/or replacement parts should be avoided as not all accessories are structural components or replacement parts per se for identification and classification purposes.

In addition, the type of grill should be set forth i.e. electric, barbecue, charcoal, gas, etc. Overall, as noted above, the nature of the goods wheels, hub caps and casters as a part of the grill itself as oppose to the cart is unclear. Furthermore, although seemingly beyond the scope of the current identification, applicant should note that metal casters as an accessory are in International Class 6 and non-metal casters as an accessory are in International Class 20. In addition, if the wheels and hub caps are parts of a cart, the goods would be properly classified in International Class 12, but may indicate goods beyond the scope of the original identification. However, if they are part of the actual grill, the goods would be properly classified in the International Class for that specific type of grill. Overall, this information and the general guidelines regarding identification and classification of grill parts and accessories may also be useful in connection with other identifications which applicant maintains in connection with co-pending applications.

Overall, applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See TMEP §1402.01.

For assistance with identifying and classifying goods and/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.

Applicant may adopt the following identification of goods, if accurate:

Accessories for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills, namely, metal casters, International Class 6; and/or

Structural components for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills, namely, metal brackets for grill carts which are a structural component of the grill; replacement parts for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills, namely, wheels, casters and hubcaps for grill carts which are a structural component of the grill; International Class 11; and/or

Wheelbarrows; hand carts for carrying weighted objects; utility trailers for portable (indicate type of grill i.e. barbecue, charcoal, electric, gas) grills; carts for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills; Accessories for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills, namely, wheels and hubcaps, International Class 12; and/or

Accessories for (indicate type of grills i.e. barbecue, charcoal, electric, gas) grills, namely, non-metal casters, International Class 20.

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c). Applicant has paid for only one class. The filing fees for adding classes to an application are as follows:

(1) $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).

Thus, the requirement for an amended classification and identification is now made FINAL. See37 C.F.R. §2.64(a).

RESPONSE TO THIS ACTION

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

ASSISTANCE

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. §2.191; TMEP §§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.

/Brendan D. McCauley/

Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@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 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 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.