Offc Action Outgoing

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:

This Office action is in response to applicant’s communication filed on April 15, 2015.

PROSECUTION SUMMARY

Previously applicant was required to amend the identification of goods because it was indefinite. Applicant’s amendment offered in its response is not fully acceptable as it now includes items which could be classified in more than one class of goods as will be explained in more detail below.

Applicant was also advised of two prior pending applications that could serve as potential bars to registration under Section 2(d) of the Trademark Act, namely, Serial Nos. 86198493 and 86198487. Applicant responded with argument that the marks are not confusingly similar for the identified goods in this case. However, the examining attorney is not persuaded. Since both of these applications are still pending as of this date, the previously issued potential refusal as to both is CONTINUED AND MAINTAINED.

Because applicant’s identification of goods raises a new issue, this application is not in condition for either publication or final refusal. Therefore, the application cannot be suspended at this time and a new non-final office action must issue.

IDENTIFICATION OF GOODS

The wording “window closers” and “door closers” in the identification of goods is indefinite and must be clarified because such goods could be classified in either Class 6, if not powered, or Class 7 if powered either by electricity, hydraulics or pneumatics. See TMEP §1402.01. Applicant must further define these goods and classify them in the appropriate class. All other amendments to the identification of goods made by applicant in its response of April 15, 2015 are acceptable. Applicant may substitute the following wording, if accurate: (Note that proposed changes have been placed in bold type. Some items require applicant to include more complete information. These have been designated with brackets{ } and bold italics. The information in the brackets is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):

CLASS 6 - Metal doors and windows and metal parts therefore, namely handles, door handles, window handles, lever handles, levers, lock escutcheons, handle escutcheons, lever escutcheons, window stays, non-powered window closers, non-powered door closers; locks of metals; small items of metal hardware, parts and accessories for the aforesaid goods, namely, door handles, window handles, lever handles, levers, screws, shims, metal window cranks, trim, casings, stays and non-powered widow and door closers;

CLASS 7 – {specify e.g., hydraulic, pneumatic, electric} door and window closers.

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

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.

MULTI-CLASS APPLICATION 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 Trademark Act Section 1(b):

(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. 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.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(b) 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.

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. §§2.62(c), 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.

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

/jeffreyjlook/

Jeffrey J Look

Law Office 108

571-272-1652

jeffrey.look@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.