UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT / PRIORITY 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: 8/6/2015

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

 

 

EXAMINER’S AMENDMENT

 

APPLICATION HAS BEEN AMENDED:  The trademark examining attorney is amending the application as follows.  No prior approval or authorization from applicant or applicant’s attorney is required.  TMEP §707.02.

 

The identification of goods is amended to fix the typo (“therefore”) in Class 9.  See TMEP §§1402.01, 1402.01(e).

 

 

PRIORITY ACTION

 

 

ISSUES APPLICANT MUST ADDRESS:  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

1.         Identification of goods.

An application’s identification of goods/services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01. 

In the instant case:

• it is noted that the identification of goods is identical to that in the applicant’s App. Ser. No. 86458410 (approved 01/21/2015 for publication on 03/17/2015) as to Classes 1 and 5, except for the addition (ostensibly to the former) of “flocculants; enzyme cleaners; filter cleaners; diatomaceous earth filter aid; pool sand”; and
• this additional wording is unacceptable as indefinite/overbroad to the extent that “enzyme cleaners; filter cleaners” require clarification and reclassification, “filter aid” must (as in the applicant’s App. Ser. No. 86578514 as amended 07/24/2015) be clarified as a pool-/spa-water treatment chemical, and “pool sand” belongs in Class 19 rather than Class 1.

Regarding the additional classes, “swimming pool and spa maintenance equipment” must (as filed in the applicant’s App. Ser. Nos. 86604041 and 86604900) be characterized as “hand-held tools” for Class 8, “lighting systems” must (as in the applicant’s Reg. No. 2718130) indicate of what apparatus they are composed, “pallets” must specify whether metal (Class 6) or not (Class 20), and “accessories” is a nearly-limitless term that requires much more specificity for proper classification.

Accordingly, the applicant must clarify along the lines indicated below.  The applicant may adopt the following identification (to the extent accurate):

Class 1—chemicals used to sanitize and to treat water, swimming pools, spas and hot tubs; water test kits, namely, chemical analysis kit for testing swimming pool, spa and hot tub water; reagent bearing test strips for testing swimming pool, spa and hot tub water; reagents for testing swimming pool, spa and hot tub water; water conditioning chemical compositions used in swimming pools, spas, and hot tubs, namely, pH balancers, clarifiers, shock treatments, sequestering agents for preventing staining, scale, rust, reducing, oxidizing agents to prevent odor and eye burn; chlorine; chemicals for pools, spas and hot tubs in the nature of metal neutralizers; chemicals used to reduce foam in pool, spa and hot tub water; stabilizers for stabilizing chlorinated water from attack by sunlight; chemicals used to aid in the activation and optimization of swimming pool, spa and hot tub filtering systems; flocculants; pool- and spa-water treatment chemicals, namely  diatomaceous-earth filter aid

Class 3—enzyme-based all-purpose cleaners for use on filters

Class 11—enzyme-based swimming-pool water- and filter-cleaning units

Class 19—pool sand  

Class 5—algaecides, sanitizers and bromination disinfectants for use in pools, spas and hot tubs

Class 7—swimming pool and spa vacuums and vacuum heads, automated swimming pool and spa vacuums, swimming pool and spa pumps, and replacement parts for the foregoing

Class 8—hand-held tools for swimming pool and spa maintenance, namely, pool rakes, leaf rakes, poles, telescoping poles, leaf skimmers, leaf catchers and replacement parts for the foregoing

Class 9—electronic apparatus for testing chlorine and pH levels, water hardness and cyanurate levels in swimming pools; thermometers not for medical purposes; swimming pool and spa thermometers, swimming pool safety alarms used to detect entry into pool, nose clips for swimmers and divers, protective goggles and straps therefor; and replacement parts for the foregoing

Class 11—water treatment equipment, namely, cartridges, floaters, feeders, and dispensing containers adapted to hold chemicals for use in the treatment of water, swimming pools and spas; swimming pool and spa filters, replacement filter cartridges, pool and spa lighting systems comprising [specify, e.g., underwater lights and fiber-optic lights and accessories therefor, namely underwater lighting fixtures, underwater light/water return units, rotary wheels for light color selection, and fiber optic cables]; pool and spa heaters, and replacement parts for the foregoing

Class 20—non-metal pallets

Class 6—metal pallets

Class 21—swimming pool brushes, wall brushes, tile brushes, deck brushes, and replacement parts for the foregoing; accessories, namely [specify Class 21 goods]

Class depends—accessories, namely [specify]

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

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.

 

2.         Fee.

The application identifies goods and/or services that are classified in at least nine classes; however, the applicant’s current fee structure is sufficient for only eight classes. 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, the applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class.  The filing fees for adding classes to an application are $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or $375 per class, when the fees are submitted with a paper response.  37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).

If the applicant prosecutes this application as a more-than-eight–, rather than as an eight-, class application, then the applicant must comply with each of the requirements below for those goods and/or services based on either an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both:

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  The applicant must list the goods and/or services by international class.

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  The applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (current fee information can be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

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

 

•            Responding to this Office Action.

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.

Unless the applicant (1) filed its application with TEAS-Plus status and (2) wishes to avoid incurring a $50-per-class fee (in which case, see immediately preceding paragraph regarding TEAS), there is no required format or form for responding to an Office Action.  However, the Office recommends that applicants use TEAS to respond to Office Actions.

If the applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office Action, (4) the 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).

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

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).

The response must be signed by the individual applicant or by a person with legal authority to bind a juristic applicant (e.g., a corporate officer, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner).  See TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all should sign.  TMEP §611.06(a).  The proper signatory must personally sign or manually enter his/her electronic signature.  TMEP §§611.01(b), 611.02.

 

/J. Brendan Regan/

Examining Attorney

Law Office 113

571/272-9212

brendan.regan@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.

 

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. 

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/6/2015 FOR U.S. APPLICATION SERIAL NO. 86680414

 

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 8/6/2015 (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.