To: | SPS Companies, Inc. (bbutwin@bernicklifson.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86890116 - SPS - N/A |
Sent: | 5/4/2016 1:25:58 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86890116
MARK: SPS
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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: SPS Companies, 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: 5/4/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
CLARIFICATION OF THE IDENTIFICATION OF SERVICES
Specifically, the word “distribution” in the identification of services in International Class 35 is indefinite and too broad and must be clarified because the word does not make clear the nature of the specific services and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Generally, the word “distribution” refers to delivery-type transportation services in International Class 39 rather than retail-related services in International Class 35. SeeTMEP §§1401.02(a), 1402.01, 1402.03.
If applicant is engaged in retail-related services, the word “distribution” should be amended to “distributorship services in the field of {indicate field, e.g., clothing, auto parts, etc.}” or “online wholesale distributorships featuring {indicate field, e.g., clothing, auto parts, etc.}” in International Class 35, if accurate. However, if applicant is engaged in delivery-type transportation services, the word “distribution” should be amended to “distribution services, namely, delivery of {indicate field or type of goods, e.g., clothing, auto parts, etc.}” in International Class 39, if accurate.
Lastly, the wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services and must be all-inclusive. See TMEP §1402.03(a).
Applicant may substitute the following wording, if accurate:
Class 39: Distribution services, namely the delivery of products used in heating, hydronics, air conditioning, heat pumps, refrigeration, ventilation, plumbing, solar and geothermal markets, namely, fittings, pipes, valves, pipe hangers, fire sprinkler accessories, architectural copper sheet and coil, painted steel and aluminum, solder, sheet lead, lead flashing, roof drainage, radiation protection, titebond sealants, copper nails, and rivets
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Alexandra Suarez/
Alexandra Suarez
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 120
p) 571-272-4845
f) 571-273
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.