UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

                                                                                                                                                   

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 12/5/2011

 

This Office Action is in response to applicant’s communication filed on November 23, 2011.

 

The amended identification is acceptable in part, but applicant must respond to the following new issues. 

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

Some of the wording “hand tools, namely…” in the identification of goods and/or services remains indefinite because additional clarification is needed with regard to the specific type of tools indicated.  See TMEP §1402.01. 

 

Further, “brooms” and “brushes” must be specifically for non-household/cleaning uses to remain in Class 008. 

 

The wording “masonry tubs” in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes.  See TMEP §§1402.01, 1402.03.  These goods in metal are in class 006, and non-metal are in class 020.  Further “diamond coated tools” are in Class 007 if part of machines, and 008 if part of hand tools. 

 

In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold italic font. 

 

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

 

IC 006.  LADDERS OF METAL; METAL SCAFFOLDING; MASONRY TUBS of metal  

 

IC 007.  CONCRETE PLACING, LEVELING, FINISHING AND CONSTRUCTION MACHINES; DIAMOND-COATED TOOLS being parts of machines; CUTTING MACHINES

 

IC 008.  HAND TOOLS, EXCLUDING GARDEN TOOLS, NAMELY, FLOATS, TROWELS, crack and tilesetter SQUEEGEES not for household use, GROUTERS in the nature of {indicate common commercial name, or describe product, or DELETE if covered by other listed goods}, EDGERS, STRAIGHT EDGES, AND GROOVERS FOR GROUT, MORTAR OR CEMENT, JOINT KNIVES, TAPING KNIVES, SQUARES, CHALK LINE REELS, JOINTERS, ROLLER RAKERS, CAULKING GUNS, HAND PUMPED SPRAYERS FOR THE MASONRY INDUSTRY, CONCRETE BRUSHES and ACID-PROOF BRUSHES for putting a finish on concrete and not for household or cleaning use, FINISHING BROOMS FOR MORTAR AND CEMENT for putting a finish on concrete and not for household or cleaning use, HAMMERS, MALLETS, CHISELS, CENTER PUNCHES, DUTCH PINS in the nature of clamps, CLAMPS,  STIRRERS  and  MIXING PADDLES  for mixing masonry compounds, HACK SAWS, MASONRY SAWS, TILE NIPPERS, SUCTION  cup  LIFTERS, BRICK SPLITTERS, TILE CUTTERS, BOLT CUTTERS, TILE SCRIBERS, END CUTTING NIPPERS, WRECKING BARS, BRICK BOLSTERS in the nature of bladed hand tools for cutting, trimming, or cleaning brick, ADHESIVE SPREADERS in the nature of trowels, PLIERS, FLOOR SCRAPERS, WALL SCRAPERS, CONCRETE SHOVELS,  hand BENDERS for use on bars, BAR CUTTERS, HAND SANDERS, BULLFLOATS  being tools used in leveling and finishing of masonry, SCREEDS being guides for the even application of masonry , TOOL BELTS, TOOL POUCHES FOR ATTACHMENT TO TOOL BELTS

      

IC 020.   MASONRY TUBS of plastic or wood

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least 4 classes; however, the fees submitted are sufficient for only 3 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

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).

 

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).

 

COMMENTS

 

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 §§304.01-.02, 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.

 

 

 

/Fong Hsu/

Law Office 115

Trademark Examining Attorney

fong.hsu@uspto.gov

Office:  (571) 272-2001

 

 

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 12/5/2011 FOR

SERIAL NO. 85245174

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 12/5/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.