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: 7/10/2012

 

This Office action is in response to applicant’s communication filed on July 5, 2012.  In the response, applicant amended the Class 1 and 2 identifications of goods and added Class 42 services to the application. The amendments to the Class 1 and 2 identifications are accepted and made of record.  However, for the reasons set forth below, the Class 11 identification of goods remains indefinite and, in all likelihood is incorrectly classified.  Finally, for the reasons set forth below, applicant’s intentions concerning the recitation of the Class 40 services is ambiguous and must be amended as set forth below. 

 

IDENTIFICATION OF GOODS

 

Class 11

 

The wording “microencapsulated phase-change materials for use in building products” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s goods.  See TMEP §1402.01.  For classification purposes, this wording does not specify any recognizable goods.  Therefore, it is not possible to properly classify these goods.  As such, the wording is indefinite and must be amended by its common commercial name. Is it a chemical, is it a fabric, what is it?  Put another way, it is not possible to classify “phase-change materials.” Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

Class ??? - Microencapsulated products, namely, microencapsulated phase-change materials, namely, _____________ [to ensure proper classification of these goods, applicant must state these good by their common commercial names] for use in building products, textiles, clothing, footwear, and headgear

 

??? – PLEASE NOTE that these goods cannot be properly classified as stated. Furthermore, Class 11 is for “environmental control apparatus” , e.g. fog generators, heat generators, electric heaters, electrochemical gas generators, atmospheric water generators, etc.  It is extremely doubtful that applicant’s goods belong in Class 11.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Although identifications of goods may be amended 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.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

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.  See TMEP §1402.04.

RECITATION OF SERVICES

In the response, applicant’s instructions as it pertains to Class 40 services was ambiguous. Although applicant indicates that it accepts the Class 42 suggestion and adds Class 42, applicant states in the application that Class 40 has “no change.”  This is inconsistent and must be corrected.  In order for applicant to add a class to the application and accept the suggested wording for Class 42, the Class 40 recitation has to be amended.

 

Applicant may substitute the following wording, if accurate: 

 

Class 40 - Custom manufacturing in the nature of microencapsulation of liquids, solids, and gases

 

            PLEASE NOTE that this amendment drops the wording “Microencapsulation technology sold as a feature of products containing microencapsulated material” which was picked up in the Class 42 recitation

 

And

 

Class 42 - Development of new technology for others in the field of Microencapsulation technology

 

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the 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 services that are not within the scope of the services set forth in the present identification.

 

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.  See TMEP §1402.04.

 

CLOSING

 

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.

 

 

 

 

 

/William H. Dawe, III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

bill.dawe@uspto.gov (not for formal responses)

 

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 7/10/2012 FOR

SERIAL NO. 85253345

 

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 7/10/2012 (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.