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: 11/13/2013

 

This Office action is in response to applicant’s communication filed on October 16, 2013

 

IDENTIFICATION OF GOODS

 

Applicant has classified “cable cleavers” in International Class 9; however, the proper classification is International Class 8.  Therefore, applicant must either (1) add International Class 8 to the application and reclassify these goods in the proper international class, or (2) delete the wording “cable cleavers” from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “Terminal fittings, namely, metal loops and rings for lines, cable, strands and synthetic ropes; cable separators, in the nature of metal and non-metal blocks; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables; cable separators, in the nature of metal and non-metal support pieces; strain relief couplings for use with underwater cables” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01. 

 

The wording “clamps for wire rope and electromechanical and optical cables” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

Applicant may adopt the following identification, if accurate:   

 

“Terminal fittings, namely, metal loops and rings for lines, cable, strands and synthetic ropes namely, ________ [SPECIFY common commercial or generic name for this good or its specific purpose]; metal dead ends for securing, gripping, supporting, and protecting lines, cables, strands, synthetic ropes, and wires; strands, namely, non-electric single or multi-strand wire; spacers for parallel lines, cable, strands, and synthetic ropes, namely, spacer brackets of metal; metal support pieces and tangent supports for cables and wires; metal hardware for securing, gripping, supporting, and protecting lines, cable, strands and synthetic ropes, namely, suspensions, dead ends, spacers, repair rods, supports and components thereof; yoke plates, clevises, socket eyes in the nature of metal eye bolts, and hold down shackles in the nature of metal shackles for lifting and rigging; steel lashing rods and wires and terminations for gripping underwater cables; steel armor rods for securing, gripping, supporting and protecting lines, cable, strands and synthetic ropes; metal suspension assemblies for lines, cable, strands and synthetic ropes, namely, brackets, connectors, and plates; cable separators, in the nature of metal and non-metal blocks namely, ________ [SPECIFY common commercial or generic name for this good or its specific purpose]; supporting and routing devices for data conductors, namely, metal brackets, supports, support blocks, and metal clamps; metal clamps for wire rope and electromechanical and optical cables” in International Class 6

 

“Cable cleavers” in International Class 8

 

“Hardware accessories for electrical ropes, cables, strands, wires and fiber optic cables, namely, cable connectors, sold separately or as a unit; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, electrical shielding spacers for cables and cable assemblies; damping assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, vibration dampeners; electrical connectors; cable protectors, namely, sheaths for electric cables; suspension assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, brackets, and plates; cable separators, in the nature of metal and non-metal support pieces, namely, ________ [SPECIFY common commercial or generic name for this good or its specific purpose]; electro-mechanical cables and fiber optic cables; splices for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; metal splice connectors for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; electric strain relief couplings for use with underwater cables” in International Class 9

 

The goods and services in classes 17, 37 and 42 are acceptable as written.

 

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

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all 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.

 

(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.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

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).

 

 

USPTO

/Sani Khouri/

Examining Attorney

Law Office 110

571-272-5884- Phone

sani.khouri@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/13/2013 FOR U.S. APPLICATION SERIAL NO. 85640249

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 11/13/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.