UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 3/27/2014

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

ISSUES APPLICANT MUST ADDRESS:  On March 27, 2014, the trademark examining attorney and Laura H. Pulliam discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

IDENTIFICATION OF GOODS

The word “kits” in the identification of goods is indefinite and must be clarified.  See TMEP §§1401.05(a), 1402.01, 1402.03.  Kits consist of a group of items that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  The type of kits and the principal components will determine classification.  See id.  Therefore, applicant must amend the identification to identify more clearly the type of kits and the principal components, so as to determine the appropriate classification, using the guidelines below.  See id.

 

For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first.  Generally, the international class of the kit will be determined by the international class of the majority of items in the kit.  For example, “nail care kits comprising nail polish, emery boards, cotton balls for cosmetic purposes and nail clippers” are in International Class 3 because this is the international class of a majority of the items (with the only item not in International Class 3 being “nail clippers,” which is in International Class 8).

 

If no items in a shared-theme kit are more dominant than any other item, the international class for the kit itself will be determined by the first-listed item after the wording “comprising.”  For example, “baking kits comprising baking pan and cake mix” are in International Class 21 (the class for “baking pans”), and “baking kits comprising cake mix and baking pan” are in International Class 30 (the class for “cake mixes”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item].”  Generally, the international class for this type of kit will be determined by the international class of the product being made.  For example, “kits for making bird feeders” are in International Class 21 (the class for “bird feeders”), and “kits for making clocks” are in International Class 14 (the class for “clocks”).

 

An exception to the above guidelines is kits identified as “hobby craft kits,” which are classified in International Class 28 regardless of the items comprising the kit or the product made by the kit.  An identification for these kits must either list the items in the kit after the word “comprising” (e.g., “hobby craft kits comprising wood panels, paint, paintbrushes, nails) or specify the product being made (e.g., “hobby craft kits for making bird feeders”).

 

Applicant may change the wording to the following, if accurate:

 

Class 9:           Billboard induction conversion kits comprising [list the goods comprising the kits, e.g., induction power inverters, voltage regulators and illumination regulators]; LED drivers; electronic fluorescent ballasts; fluorescent induction sign lighters; power supplies.

 

TMEP §1402.01.

 

PLEASE NOTE: 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 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.

 

FAILURE TO RESPOND – ABANDONMENT OF SPECIFIC GOODS

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 9 will be deleted from the application:  Billboard induction conversion kits.  The application will then proceed with the following goods in International Class 9 only: LED drivers; electronic fluorescent ballasts; fluorescent induction sign lighters; power supplies.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

 

/Ronald L. Fairbanks/

Ronald L. Fairbanks

Trademark Examining Attorney

Law Office 119

(571) 272-9405

ron.fairbanks@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 3/27/2014 FOR U.S. APPLICATION SERIAL NO. 86139629

 

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 3/27/2014 (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.