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: 7/14/2013

 

This Office action is in response to applicant’s communication filed on 06/05/2013.

 

In a previous Office action dated 12/31/2012, registration of the applied-for mark was refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3176385, 1540120 and 1351385.  Trademark Act Section 2(d), 15 U.S.C. §1052(d). Applicant was also required to satisfy the following requirement:  amend the identification of goods to provide acceptably definite wording.

 

Upon review of applicant’s arguments in its Response and its proposed amendment to the identification of goods, the Section 2(d) likelihood of confusion refusal is withdrawn.

 

However, applicant’s proposed amendment to the identification of goods remains indefinite as it now identifies goods falling within more than one international class. Applicant must therefore respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 SUMMARY OF ISSUES that applicant must address:

• Identification of goods

 

 

IDENTIFICATION OF GOODS

The wording 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.   Specifically, “hand-operated hand tools for gardening, namely atomizers” may identify goods in class 008 if these are for industrial or commercial use or for use with industrial liquids; or may identify goods in class 021, if for household use. In addition, the following wording in the identification remains indefinite and must be clarified.

Class 007

 

• In class 007, the wording “soil harvesting and soil-removing equipment for beets, namely, diggers for harvesting beets” must be further clarified to specify that these are “power-operated” because “hand tool” diggers are classified in class 008.
• “Soil separators, namely, tillers” is indefinite as applicant has failed to specify if these are “power-operated tillers” in class 007 or “hand-operated tillers” in class 008. Applicant must clarify this to determine proper classification.
• For “cutter dividers namely, for harvesting beets”, applicant must further specify the goods intended by “cutter dividers” by its common commercial name.
• For “sprayer booms” applicant must specify “sprayer booms” by its common commercial name.
• The entry “surface lining apparatus and installations for machines, namely, grips for polishing machines” is indefinite. Applicant must further specify the type or purpose of the grips and their connection to the “surface lining apparatus”.
• The wording “distributors namely, machines for distributing, pulverulent or fibrous products, namely extractors machines for powdery and fabric products” remains indefinite. Applicant must further clarify the purpose and use of the goods.

 

Class 008:

 

·       In Class 008, the term “sprayers” is indefinite. Applicant must indicate what the sprayers are used for, i.e., “hand operated sprayers for insecticide”.

·       The entry “hand-operated hand tools for gardening, namely atomizers” must be further clarified to specify if the goods are for industrial or commercial use in class 008. Please note that and atomizers for household use, both power-operated and hand-operated, are classified as household apparatus in Class 21.

 

Applicant may adopt the following identification, if accurate: 

 

International Class 007: “Large instruments and equipment, namely, machines for use in agriculture, viticulture and horticulture, namely, portable, tractor towed and automotive spraying machines, soil harvesting and soil-removing equipment for beets, namely, power-operated diggers for harvesting beets, soil separators, namely, power-operated tillers, power-operated subsoilers, and disk plows and harrows, leaf strippers for harvesting beets, power-operated grinders, cutter dividers, namely, {specify items intended by “cutter dividers”} for harvesting beets, hoeing machines, equipment for protecting plants against parasites, namely, spraying machines, pumps as parts of spraying machines, spray nozzles as part of spraying machines, sprayer booms for agricultural sprayers machines, namely, {further specify “sprayer booms” by common commercial names}; motors and engines except for land vehicles, transmission couplings and belts excluding for motors and engines for land vehicles; air compressors and structural parts of compressed air installations, namely, reciprocating air compressors, fixed, mobile and portable air compressors; surface lining apparatus and installations for machines, namely, grips for polishing machines, namely {further specify goods}; distributors namely, machines for distributing pulverulent or fibrous products, namely extractor machines for [further specify use or purpose of machines, i.e., for use in [   ]} for powdery and fabric products; electrostatic generators; high-voltage generators; accessories, namely, component parts for electrostatic generators; accessories namely, component parts for high-voltage generators”.

 

International Class 008: “Small agricultural implements, spare parts and accessories, namely, hand-held tools and instruments, namely, sprayers for {specify, i.e., for insecticide}; hand-operated hand tools for gardening, namely atomizers for {further specify field of use, i.e., for industrial or commercial use,  for use with industrial liquids}; all of the foregoing excluding razor and utility blades; hand-operated spray guns for spraying insecticides, fungicides, herbicides and other similar chemical, biological and phyto-sanitary products and nozzles as component parts for such hand-operated spray guns”.

 

International Class 021: “Hand-operated atomizers for household use, namely {further specify meaning of “gardening use” in amended wording or type of liquids atomizers are used with}”.

 

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 USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services that are classified in at least 3 classes; however, the fees submitted are sufficient for only 2 classes.  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. 

 

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 a foreign registration under Section 44(e):

 

(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).

 

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.

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 105

571-272-8982

lee-anne.berns@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 7/14/2013 FOR U.S. APPLICATION SERIAL NO. 85690644

 

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 7/14/2013 (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.