To: | Sunrise Safety Services, Inc. (jonathan.ahn.esq@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86279836 - SUNRISE - Sunrise/TM-S |
Sent: | 8/25/2014 11:01:20 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86279836
MARK: SUNRISE
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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: Sunrise Safety Services, 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: 8/25/2014
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’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).
SPECIMENS UNACCEPTABLE FOR CLASSES 6 AND 7
Registration is refused because the specimens for the goods in Classes 6 and 7 are unacceptable. Specifically, the specimen for Class 6 does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 6. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The specimen for Class 7 is illegible, and thus does not clearly show the applied-for mark in use in commerce. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The specimen for Class 37 is acceptable.
With regard to Class 6, the applied-for mark, as used on the specimen, would generally be perceived as merely a decorative feature of the goods, namely, metal signs, because it is prominently placed in a manner that typically advertises the name of a business, rather than the source indicator of the sign itself. Source indicators on goods such as signs typically appear in a less prominent manner and location.
With regard to the specimen for Class 7, applicant's specimen is unclear and cannot be properly analyzed. Applicant must submit a clear photograph of a complete container for the goods displaying the applied-for mark so that the trademark examining attorney can properly assess the registrability of the mark. See 37 C.F.R. §2.61(b); TMEP §904.02(c)(i).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods may 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. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a true, unaltered copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.
(2) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/S5.jsp.
Applicant should note the following requirement(s).
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
The wording in the identification of goods currently classified in Class 6, indicated below in bold, must be clarified because it is too broad and/or indefinite and could include goods in other international classes. See TMEP §§1402.01, 1402.03.
International Class 6: metallic non-luminous, non-mechanical signs, road signs, directional panels, traffic barricades {specify material, e.g. of metal}, {specify function, e.g., "safety"} traffic cones, {specify material and function, e.g. "portable nonmetal traffic barriers in the nature of"} plastic drums, road marking straps {clarify the function of this good}, pavement marking in-laid tapes, and reflective pavement markers
Applicant may substitute the following wording and classification, if accurate:
International Class 6: metallic non-luminous, non-mechanical signs, road signs, directional panels, and metal traffic barricades {if barricades are made of metal}
International Class 7: air compressors
International Class 9: {specify function, e.g., "safety"} traffic cones; reflective pavement markers
International Class 17: pavement marking in-laid tapes
International Class 19: non-metal traffic barricades {if barricades are not made of metal}; {specify material and function, e.g. "portable nonmetal traffic barriers in the nature of"} plastic drums,
International Class 37: rental of construction equipment accessories, namely, traffic safety signs, traffic cones, traffic drums, road and directional signs, electronic variable sign board, light towers, air compressors, and concrete jersey barrier walls
See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401, 1402.01, 1402.03.
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.
ADVISORY: MULTIPLE – CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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 6 classes; however, applicant submitted a fee(s) sufficient for only 3 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) 37; and applicant needs a specimen for class(es) 6, 7, 9, 17, and 19.
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.
(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.
The filing fees for adding classes to an application are as follows:
(1) A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).
(2) A $375 fee per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).
/Megan R. Askew/
Examining Attorney
Law Office 105
571-272-5858
megan.askew@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.