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: 9/24/2013

 

 

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, 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

SUMMARY OF ISSUES that applicant must address:

 

• Claim of Ownership
• Identification of the Goods

 

Claim of Ownership

 

If applicant owns U.S. Registration No. 2769488, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No. 2769488.

 

Identification of the Goods Indefinite

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Applicant may adopt the following identification, if accurate: 

 

“Chemicals and unprocessed plastics, namely, polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials, e.g., anionic surfactants as raw materials}, blends and mixes of the above with alloys and laminates, and combinations of any or all of the above for use in the manufacture of industrial products, consumer and household products; polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials, e.g., anionic surfactants as raw materials} and blends and mixes of the above with alloys and laminates, and combinations of any or all of the above, in the form of resin, pellets, beads, powders, flakes, filaments, films, sheets, bars, blocks, rods, tubes, etc., {underlined wording comprises processed goods, which are in Class 017.  The goods must remain in unprocessed form for classification in Class 001} for use in the manufacture of industrial products, consumer and household products; polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials, e.g., anionic surfactants as raw materials} and blends and mixes of the above with alloys and laminates, and combinations of any or all of the above, in the form of resin, pellets, beads, powders, flakes, filaments, films, sheets, bars, blocks, rods, tubes, etc., {underlined wording comprises processed goods, which are in Class 017.  The goods must remain in unprocessed form for classification in Class 001} for use in the manufacture of commercial industrial, domestic and consumer goods; unprocessed composites made from polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials, e.g., anionic surfactants as raw materials} and blends and mixes of the above with alloys and laminates, and combinations of any or all of the above in resin or power form for use in the manufacture of industrial products, consumer and household products; commercial industrial, domestic and consumer goods made from polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, and blends, mixtures, alloys, laminates, combinations of any or all of the above {underlined wording is indefinite and misclassified.  Applicant must identify the final product, regardless of material composition, by common commercial name, and classify the goods accordingly,” in International Class 001. 

 

“Processed and semi-processed polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials by common commercial name, e.g., plastic films} blends and mixes of the above with alloys and laminates, and combinations of any or all of the above, in the form of pellets, beads, flakes, filaments, films, sheets, bars, blocks, rods, and tubes for use in the manufacture of industrial products, consumer and household products; processed and semi-processed polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials by common commercial name, e.g., plastic films} blends and mixes of the above with alloys and laminates, and combinations of any or all of the above in the form of resin, pellets, beads, powders, flakes, filaments, films, sheets, bars, blocks, rods, and tubes, {underlined wording identifies unprocessed materials in Class 001 and should be removed from this Class} for use in the manufacture of industrial products, consumer and household products; processed and semi-processed polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials by common commercial name, e.g., plastic films} blends and mixes of the above with alloys and laminates, and combinations of any or all of the above in the form of resin, pellets, beads, powders, flakes, filaments, films, sheets, bars, blocks, rods, and tubes, {underlined wording identifies unprocessed materials in Class 001 and should be removed from this Class} for use in the manufacture of commercial industrial, domestic and consumer goods; composites made from processed and semi-processed polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, namely, {specify materials by common commercial name, e.g., plastic films} blends and mixes of the above with alloys and laminates, and combinations of any or all of the above, in the form of pellets, beads, flakes, filaments, films, sheets, bars, blocks, rods, and tubes for use in the manufacture of industrial products, consumer and household products; commercial industrial, domestic and consumer goods made from processed and semi-processed polymers, copolymers, biopolymers, elastomers, rubbers, polymeric additives, copolymeric additives, biopolymeric additives, elastomeric additives, rubber additives, biodegradable, bioerodible and compostable materials, and blends, mixtures, alloys, laminates, combinations of any or all of the above {underlined wording is indefinite and misclassified.  Applicant must identify the final product, regardless of material composition, by common commercial name, and classify the goods accordingly,” in International Class 017. 

 

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 Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); 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.

 

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.

Response

If the applicant or its attorney 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.

 

 

/David A. Hoffman/

Examining Attorney

Law Office 107

(Ph) 571-272-8805

(Fx) 571-273-8805

Email:  david.hoffman@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 9/24/2013 FOR U.S. APPLICATION SERIAL NO. 85949961

 

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 9/24/2013 (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.