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: 6/13/2012

 

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 RESULTS

 

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).

 

IDENTIFICATION OF GOODS

 

The identification of goods must be clarified because it is too broad and/or could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, a number of the goods must be clarified as to their nature. See specifics below. Furthermore, it is unclear whether the goods are component parts sold separately from the furniture or whether they are integral component parts that are incorporated into the furniture as a single finished product.  If they are integral component parts, all the goods are in Class 20.  If they are parts sold separately, some goods may fall into other classes.

 

The applicant may adopt the following is accurate (changes in bolded text):

 

International Class 20: Overhead storage cabinets, welded assemblies in the nature of {specify what these goods are}, slat wall units, {clarify the nature of the boards and the inserts} bulletin and display tack board inserts, namely, {describe inserts}, power poles, namely, electrical outlet poles, trim caps for {specify part of furniture, e.g. drawers}, support bases, privacy screens, end trim for {specify part of furniture, e.g. drawers}, pedestal brackets, {clarify nature of the boards and inserts} bulletin and display tack board and dry erase marker board inserts, namely, {describe inserts}, work surfaces, dividers for {specify, e.g. drawers}, pedestals, all sold as integral component parts of office furniture

 

In the alternative, if all the goods above are not integral component (e.g. sold separately) but are specially adapted for office furniture, then the goods may still remain in Class 20.  In that case, the applicant should add at the end of the list of goods “all the foregoing being specially adapted for office furniture and sold as component parts of office furniture.”

 

If the goods are sold as separate component parts of furniture the following is suggested:

 

International Class 9:  Power poles, namely, electrical outlet poles, sold as a separate component part for office furniture

 

International Class 16:  Dry erase marker board inserts, namely, {specify nature of goods}, sold as a separate component part for office furniture

 

International Class 20: Overhead storage cabinets, welded assemblies in the nature of {specify what these goods are}, slat wall units, {clarify the nature of the boards and the inserts} bulletin and display tack board inserts, namely, {describe inserts}, {specify material composition; non-metal falls into Class 20} non-metal trim caps for {specify part of furniture, e.g. drawers}, support bases, privacy screens, {specify material composition; non-metal falls into Class 20} non-metal end trim for {specify part of furniture, e.g. drawers}, pedestal brackets {indicate they are specifically adapted for pedestals to remain in Class 20} specifically adapted for pedestals, work surfaces, dividers for {specify, e.g. drawers}, pedestals, all sold as component parts of office furniture

 

 

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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 et seq.

 

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.

 

 

 

 

 

 

MULTIPLE CLASSES

 

 

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).

 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

(571) 272-9303

jean.im@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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 6/13/2012 FOR

SERIAL NO. 85557582

 

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 6/13/2012 (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.