To: | Delaware Capital Formation, Inc. (chiusptomail@bakermckenzie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86148571 - OK - 131170 |
Sent: | 9/17/2014 9:11:02 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86148571
MARK: OK
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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: Delaware Capital Formation, Inc.
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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: 9/17/2014
This Office action is in response to applicant’s communication filed on August 15, 2014.
In that response, applicant satisfied the requirement to claim ownership of its prior registration.
In addition, applicant submitted a proposed amendment to its identification of goods. For the reasons set forth below, the proposed amendment cannot be accepted.
Please note that a new requirement to provide additional information relating to the goods is set forth below.
Please also note that the Section 2(d) refusals are moot/withdrawn in light of the cancellation of the two cited registrations.
Identification of Goods Must Be Clarified
The identification of goods, as amended is indefinite and must be clarified. See TMEP §1402.01. Please see suggested identification below for specific wording that requires clarification.
Please note that an application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id.
For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. Id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” Id.
In addition to wording in the proposed amendment being indefinite, wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. The original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
An acceptable identification of goods and/or services is required in a U.S. application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01. An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The U.S. application originally identified the goods and/or services as follows: “hand tools, namely, wire-wrap products, bench tools and related products, impact or punch down tools.”
However, the proposed amendment identifies the following goods that are beyond the scope of the original identification: “integrated circuit (IC) insertion and extraction tools, burnishers, alignment tools, and push-pull force gauges, electrical tools, in the nature of hollow shaft nut drivers, panel knockout kit, and extra long screwdrivers to reach the back of rectifiers”. Thus, the identification, incorporating this amendment, is not acceptable. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01. If these goods are in fact a type of wire-wrap hand tool, a bench tool or and impact/punch down tool, then applicant must specifically amend its identification of goods to include this clarification.
Applicant may adopt the following identification, if accurate. Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to applicant’s current identification and wording/punctuation with a line through it indicates language of which the examining attorney is suggesting deletion.
Class 8:
“Hand tools, namely, wire-wrap products in the nature of hand tools for making coiled wire terminal connections, connections; bench tools and related products in the nature of pliers, wrenches, hand tools for connecting fiber-optic fiber-optics and
cable cables connector tools, wire fishing hand tools, sewing and pulling hand tools,
and wire cutting and stripping hand tools, tools; integrated circuit (IC) insertion and extraction tools, burnishers, alignment tools, and push-pull force gauges, electrical tools, in the nature of hollow shaft nut drivers, panel knockout kit, and extra long
screwdrivers to reach the back of rectifiers, impact or punch down tools in the nature of hand tools to properly seat and trim wires used with insulation displacement connectors.”
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.
Additional Information Required
To permit proper examination of the application, applicant must submit additional product information about the goods. See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Responding to this Office Action
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.
Telephone/Email Suggested for Questions
/Meghan Reinhart/
Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@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.