UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 1/29/2016

 

 

After approval for publication and upon review prior to actual publication in the Official Gazette the following requirement(s)/refusal(s) has/have been raised.  Therefore, this application has been withdrawn from publication so prosecution can continue until the requirement(s)/refusal(s) has/have been satisfied.  The examining attorney regrets the lateness of this/these requirement(s)/refusal(s).

 

 

Requirement for Definite Identification and/or Classification of Goods/Services – Class 37 Only

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods/services.  If there is no common commercial or generic name, applicant must describe the products/services and intended consumer(s) as well as its main purpose(s) and intended use(s). 

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The wording "Rental of mats" currently in Class 37 without further specification is indefinite and must be clarified.  Furthermore, these services could be classified in multiple classes.  For example, the rental of mats for use in construction or related operations is in International Class 37, the rental of mats in the nature of rugs or floor coverings is properly classified in Class 43. The rental of mats in the nature of yoga mats is classified in Class 41. The rental of mats in the nature of place mats is properly classified in Class 43.

 

Applicant may adopt the following identification of goods/services, if accurate.  See TMEP §1402.01.  Suggested revisions are in capital letters, with suggested deletions lined in the color red. 

 

 

“Metal brackets for joining lumber or timber members,” in International Class 6.

 

“Trailer boards,” in International Class 12.

 

“Shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction; retention walls made of wood for earth retention; lagging, namely, lumber configured for earth retention during excavation; lagging panels, namely, assembled wooden panels for earth retention during excavation; shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels; wooden ground protection mats, namely, crane mats, site access mats, and timber mats; barge mats, namely, timber mats configured to distribute weight of cargo; outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes; excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery; floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments; transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting; trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges; pilings of wood; vessel saddles, namely, large wooden timbers configured to secure and support curved vessels; crating, namely, wooden boxes for shipment of articles; blocking lumber; earth retention lumber; custom radius cut block supports for supporting steel coils during shipment; construction lumber; plywood and forming plywood; construction timber; creosote lumber; tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations; marine plywood; pole barn steel; skids; crates; pallet boxes; sheathing; pre-cut lumber; timbers; wheel chocks made primarily of wood; wooden wedges for securing articles; wooden dunnage for securing or supporting articles,” in International Class 19.

 

“Non-metal pallets; non-metal pipe cradles in the nature of non-metal pallet like items used to transport or store pipes,” in International Class 20.

 

“Raw timber,” in International Class 31.

 

“Lumber and timber resource management,” in International Class 35.

 

“Rental of mats FOR USE IN [SPECIFY THE CLASS 37 USES, E.G., CONSTRUCTION OPERATIONS, OPERATIONS RELATING TO THE PRODUCTION OF GAS AND OIL, MILITARY OPERATIONS, ETC.]; Installation of mats; removal of mats,” in International Class 37.

 

“Warehousing services, namely, storage, distribution, pick-up, transport, delivery and packing for shipment of lumber and timber products,” in International Class 39.

 

“Sawmill services; timber logging; timber felling and processing; custom manufacturing of lumber and timber products, namely, shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction, retention walls made of wood for earth retention, lagging, namely, lumber configured for earth retention during excavation, lagging panels, namely, assembled wooden panels for earth retention during excavation, shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels, wooden ground protection mats, namely, crane mats, site access mats, and timber mats, barge mats, namely, timber mats configured to distribute weight of cargo, outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes, excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery, floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments, transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting, trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges, pilings of wood, vessel saddles, namely, large wooden timbers configured to secure and support curved vessels, crating, namely, wooden boxes for shipment of articles, blocking lumber, earth retention lumber, custom radius cut block supports for supporting steel coils during shipment, construction lumber, construction timber, tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations, crates, pre-cut lumber, timbers, wheel chocks made primarily of wood, wooden wedges for securing articles, wooden dunnage for securing or supporting articles,” in International Class 40.

 

“RENTAL OF YOGA MATS,” in International Class 41.

 

“RENTAL OF MATS IN THE NATURE OF FLOOR COVERINGS OR RUGS; RENTAL OF PLACE MATS; RENTAL OF DOOR MATS,” in International Class 43.

 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  37 C.F.R. §2.85(e)(1); TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.  37 C.F.R. §2.85(e)(2).

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

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.

 

Requirements for Multi-Class Applications

 

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 11 classes; however, applicant submitted a fee(s) sufficient for only nine 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.

 

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.

 

 

 

Only If Applicable - Examiner’s Amendment Recommended

 

Examiner’s Amendments cannot be issued for partial amendments.  However, if all of the  outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application.  Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.

 

Questions Regarding This Office Action

 

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.

 

 

Responding to Office Action

 

The USPTO applies the following legal authorities when processing a trademark and/or service mark application: 

 

• The Trademark Act of 1946, as amended
• The Trademark Rules of Practice, as amended
• Precedential court and Trademark Trial and Appeal Board decisions
• The USPTO’s Trademark Manual of Examining Procedure (TMEP), as periodically updated
• The USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP), as periodically updated 

 

See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp.  The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

 

Please note that applicant must explicitly address all issues raised in this Office Action.  If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal.  To respond to requirements/informalities the applicant must specifically request that changes to the record be made.

 

There is no required format or form for responding to an Office Action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html.  TO RESPOND TO THIS LETTER VIA TEAS:  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. 

 

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. 

 

Applicant should provide a current telephone number with its response to expedite processing.  TMEP §302.03(a).

 

If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

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.

 

 

 

 

 

/Michael A. Wiener/

Trademark Attorney

Law Office 108

(T): (571) 272-8836

E-Mail (unofficial correspondence only):

michael.wiener@uspto.gov

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/29/2016 FOR U.S. APPLICATION SERIAL NO. 86397202

 

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 1/29/2016 (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.