To: | JessEm Products Limited (ustrademarks@senniger.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86135807 - JESSEM - JTC 3746 |
Sent: | 10/9/2014 11:30:24 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86135807
MARK: JESSEM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: JessEm Products Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 10/9/2014
This Office action is in response to applicant’s communication filed on March 18, 2014.
Registration was refused based on the following refusal(s) and/or requirement(s):
Applicant indicated that the name in the mark does not identify a living individual, confirmed its entity type, and provided a substitute specimen. Each is accepted.
Applicant also amended the identification of goods. Unfortunately, further clarification is required. Moreover, it appears that the goods fall into more than one class. These issues are addressed again below, and additional information regarding the identification is included in this action.
Identification and Classification of Goods
Some of the wording in the identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application. The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services. 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
More specifically, the nature of the “routers” in the following items must be clarified: router table fences and router table insert plates sold as integral component parts of router tables specially adapted for use with power operated routers; parts specially adapted for power operated routers, namely, level adjusters for routers.
In this regard, power operated routers that are tools are in Class 7. However, many power-operated routers that are computer equipment are properly classified in Class 9. Thus, clarification is required.
Mitre gauges for measuring angularity, specifically adapted for use with power operated table saws, also must be properly classified in Class 9. In this regard, many tool measuring instruments are in Class 9. Please note, however, that if the gauges are sold as integral component parts of the table saws, then that must be clarified and, in that case, the goods would be properly classified in Class 7. In this regard, items sold as integral component parts of a finished good are classified in the class appropriate for the finished good.
Therefore, applicant must amend the identification of goods to delete the wording “TENON” and substitute other generic wording.
Applicant may substitute the following wording, if accurate. See TMEP §§1402.01, 1402.03.
Power operated tools and parts thereof, namely, routers, and router tables being specially adapted for use with power operated routers; router bits; circle cutting jigs specifically adapted for use with power operated routers; router table fences and router table insert plates sold as integral component parts of router tables specially adapted for use with power operated routers being power tools; parts specially adapted for power operated tools, namely, level adjusters for power operated routers; dovetail jigs specifically adapted for use with power operated routers; mortise and ________ [use generic wording as a substitute for the registered mark “tenon”] jigs specifically adapted for use with power operated hand held drills; saw fences for band saw tables and adjustable stops sold as integral component parts for such fences; table saw tables, namely, tables specially adapted for use with power-operated table saws; sliding tables specially adapted for use with table saws; dowelling jigs specifically adapted for use with power operated hand held drills; drill press tables in the nature of tables specially adapted for use with power-operated drill presses; power-operated tools, namely, drill presses; table saws; feather boards being machine tools used to maintain lateral pressure on a board as it is fed through a power-operated table saw or router table, in Class 7.
Mitre gauges for measuring angularity, specifically adapted for use with power operated table saws, in Class 9.
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-classification Requirements
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 7 only. If applicant adds a class, a specimen for that class must be provided.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
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.