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:

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, before the mark can proceed, the following issue(s) must be addressed:

Identification of Goods Unacceptable

The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must clarify the identification of goods by further specifying the exact nature of the goods. See TMEP §1402.01. If there is no common commercial or generic name, applicant must further describe the product(s) and intended consumer as well as its main purpose and intended uses.

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(c).

Applicant should note the following guidelines when amending the identification of goods:

Descriptions of goods and services should use the common, ordinary name for the goods and/or services. TMEP §1402.01. If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.

● Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/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 and/or services that are not within the scope of the goods and/or services set forth in the present identification.

● In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

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

International Class 6: Metal building components namely steel channels; metal laths; metal studs, joists, rafters; METAL WALL COMPONENTS, NAMELY, tracks, resilient channels, furring channels, furring bars, carrying channels, Z-bars, steel profiles namely angles; METAL BUILDING flashings, BRICK SIDING COMPONENTS, NAMELY METAL CLIPS; METAL Drywall and plaster construction products, namely drywall cornerbead covers, drywall corner beads; METAL drywall trims, namely paper-faced trims and metal L-trims, J-trims, Z-trims, angle trims, framing trims, reveal trims FOR (Applicant must indicate the purpose of the trims); METAL Ceiling grid systems COMPRISED OF main T runners and cross tees adapted to be connected into a grid to support ceiling tiles; METAL ceiling trims namely wall angles, column rings, reveal column rings, corner caps, hold down clips, paired tee clips, AND field cut tee attachment clips; profiled metal decks for use in constructing concrete floors and roofs; Metal building components namely shaftwall systems COMPRISED OF METAL shaftwall studs and tracks; METAL bridging clips FOR (Applicant must indicate purpose of bridging clips), METAL deflection clips (Applicant must indicate purpose of deflection clips) and METAL PIPE connectors, METAL PIPE connector plates; METAL expansion joints; METAL plaster stops; METAL brick ties, METAL brick connectors AND METAL brick anchors

If the applicant has any questions or needs assistance in responding to this Office action, please email the assigned examining attorney or call the trademark helpline at 571-272-9250.

/tmm/

Theodore McBride Law Office 103

HELP LINE: 571-272-9250

theodore.mcbride1@uspto.gov

phone: 571-272-9281

fax: 571-273-9281

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.