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: 8/7/2015

 

The examining attorney has received and reviewed the applicant’s Response to Office Action dated July 16, 2015.  The examining attorney has issued this Non-Final Office Action so that the applicant may respond to the following new issue(s).

 

The examining attorney has reviewed the applicant’s amendments to the Identification of Goods. The examining attorney has provided additional guidance below regarding minor issues that remain.  The examining attorney is issuing this Non-Final action as it appears issues with International Class 07 were not addressed by the examining attorney in the original Office action.  The examining attorney apologizes for the inconvenience.

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

Identification of Goods – Clarification Required:

 

The wording “metal fasteners, namely, toilet installation components, namely, wax ring and bolts, all sold as a unit” in the Class 06 identification of goods is potentially misclassified.  See TMEP §1402.01.  Classification of systems or kits is classified by the dominant component.  Since the goods are prefaced by “metal fasteners,” the primary component, i.e., “bolts” must be set forth as the leading component since the “wax rings” are secondary.   

 

The wording “non-metal fasteners, namely, toilet installation components, namely, wax ring and bolts, all sold as a unit” in the Class 20 identification of goods is potentially misclassified.  See TMEP §1402.01.  Classification of systems or kits is classified by the dominant component.  Therefore, for the goods to be definite and appropriately classified, the “bolts” must be listed as the dominant component.  Please note that “wax rings” would be classified under “non-metal sealing rinds for use as connection seals” in Class 17. 

 

The wording “evaporative cooler motors; jet pumps; pool cover pump; utility pumps” in the Class 07 identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must further clarify the purpose or use of the pumps. 

 

The wording “sewage pump basin” and “sump pump basin” in the Class 07 identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Please note that as individual goods, the classification for “metal water run off basins” is Class 06 and “non-metal water run off basins” is Class 19.  Alternatively, if the goods are a component part of the pump system, applicant should clarify accordingly.

 

Applicant has classified “Plastic pest barricade for exhaust hoods, namely, dryer vent caps” in International Class 17; however, the proper classification is International Class 19.  Therefore, applicant may respond by deleting “Plastic pest barricade for exhaust hoods, namely, dryer vent caps” from the application, or reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 01:         NO CHANGES REQUIRED and/or

 

Class 06:         “Metal casters; metal fence brackets; handrails of metal; metal brackets for handrails; Metal gate hooks and eyes; installation and operation hardware for garage doors, namely, metal torsion springs, garage door rollers made of metal, metal locking mechanisms for garage doors, metal garage door hinges, metal garage door locks, and metal rolling door locks; metal hardware, namely, magnetic pegboard mount; metal access door for electrical and plumbing installation; metal bicycle hanger; metal chains; metal closet hardware, namely, hinges, knobs, poles, catches, and parts therefor; door push bars of metal; metal clothes dryer ventilation ducts; flexible venting equipment, namely metallic and aluminum ducting hose for use in clothes dryer venting; metal hangers for tools, ladders, bicycles; metal hardware, namely, corner braces, mending plates; metal hooks and hook rails; metal rods; metal shelf hanger; spring clips of metal; steel rods; wire ropes; dryer vent kits comprising a metal clothes dryer exhaust vent, a flexible exhaust duct, and clamps therefor; toilet installation kit comprised of metal bolts and wax rings, all sold as a unit; metal water run off basins” and/or

 

Class 07:         “Condensate removal pumps; evaporative cooler motors other than for land vehicles; jet pumps for [specify function further, e.g., removal of sewage]; pool cover pumps for [specify function further, e.g., the removal of water]; sewage pumps and component basin sold as a unit; submersible pumps; sump pump and component basin sold as a unit; utility pumps, namely, [specify further by common commercial name or purpose, e.g., electric pumps]”

 

Class 08:         NO CHANGES REQUIRED and/or

 

Class 11:         NO CHANGES REQUIRED and/or

 

Class 16:         NO CHANGES REQUIRED and/or

 

Class 17:         “Plastic pest barricade for exhaust hoods, namely, dryer vent caps [Move to Class 19]; weatherstripping sealants in the nature of caulk” and/or

 

Class 19:         “Non-metal building wall access panels for electrical and plumbing installation; non-metal vent cover for HVAC ducts; Plastic pest barricade for exhaust hoods, namely, dryer vent caps; non-metal water run off basins” and/or

 

Class 20:         Felt pads applied to legs or weight bearing surfaces of furniture to prevent furniture from scratching or scuffing floor; Furniture slides made of plastic for household use; carpet coasters for protecting furniture legs; Bumper guards for furniture; Non-metal mounting brackets in the nature of mounting strips for general use; Non-metal casters; plastic clothesline pulley; plastic end caps for closet poles and rods; toilet installation kit comprised of non-metal bolts and wax rings, all sold as a unit; and/or

 

Class 21:         NO CHANGES REQUIRED  and/or

 

Class 22:         NO CHANGES REQUIRED and/or

 

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.

 

Partial Abandonment Advisory:

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following goods will be deleted from the application:  “wax ring” in Class 06 and Class 20, “evaporative cooler motors; jet pumps; pool cover pump; utility pumps” in Class 07, “sewage pump basin” and “sump pump basin” in the Class 07.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).  The application will then proceed with the following only: 

 

Class 01:         “Construction industry adhesives” and/or

 

Class 06:         “Metal casters; metal fence brackets; handrails of metal; metal brackets for handrails; Metal gate hooks and eyes; installation and operation hardware for garage doors, namely, metal torsion springs, garage door rollers made of metal, metal locking mechanisms for garage doors, metal garage door hinges, metal garage door locks, and metal rolling door locks; metal hardware, namely, magnetic pegboard mount; metal access door for electrical and plumbing installation; metal bicycle hanger; metal chains; metal closet hardware, namely, hinges, knobs, poles, catches, and parts therefor; door push bars of metal; metal clothes dryer ventilation ducts; flexible venting equipment, namely metallic and aluminum ducting hose for use in clothes dryer venting; metal hangers for tools, ladders, bicycles; metal hardware, namely, corner braces, mending plates; metal hooks and hook rails; metal rods; metal shelf hanger; spring clips of metal; steel rods; wire ropes; dryer vent kits comprising a metal clothes dryer exhaust vent, a flexible exhaust duct, and clamps therefor; metal fasteners, namely, toilet installation components, namely, bolts” and/or

 

Class 07:         “Condensate removal pumps; sewage pumps; submersible pumps; sump pumps”

 

Class 08:         “Hand operated drill pump” and/or

 

Class 11:         “Air diffusers for clothes dryers; exhaust hoods for clothes dryers; PVC fittings, namely, plumbing couplers; refrigeration coils; strainers for plumbing drains; ventilating exhaust fans” and/or

 

Class 16:         “Paper drop cloths; pastes and other adhesives for stationery or household purposes; thumb tacks” and/or

 

Class 17:         “weatherstripping sealants in the nature of caulk” and/or

 

Class 19:         “Non-metal building wall access panels for electrical and plumbing installation; non-metal vent cover for HVAC ducts; Plastic pest barricade for exhaust hoods, namely, dryer vent caps” and/or

 

Class 20:         “Felt pads applied to legs or weight bearing surfaces of furniture to prevent furniture from scratching or scuffing floor; Furniture slides made of plastic for household use; carpet coasters for protecting furniture legs; Bumper guards for furniture; Non-metal mounting brackets in the nature of mounting strips for general use; Non-metal casters; plastic clothesline pulley; plastic end caps for closet poles and rods; Non-metal fasteners, namely, toilet installation components, namely, bolts” and/or

 

Class 21:         “Gloves for household purposes” and/or

 

Class 22:         “Clotheslines; drop cloths; unfitted general-purpose tarps; Boat dock lines, namely, ropes”

 

 

See TMEP §718.02(a). 

 

Responding to Office Action:

 

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 has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.

 

 

/Dominic R. Fathy/

Trademark Examining Attorney

Law Office 104

(571) 272-8801

dominic.fathy@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/7/2015 FOR U.S. APPLICATION SERIAL NO. 86415374

 

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 8/7/2015 (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.