To: | Wal-Mart Stores, Inc (ustm@walmartlegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87115065 - HYPER TOUGH - 81252118 |
Sent: | 11/3/2016 12:30:00 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87115065
MARK: HYPER TOUGH
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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: Wal-Mart Stores, 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: 11/3/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
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).
Identification of Goods
For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first. See id. Generally, a kit is classified in the same international class as the majority of items in the kit. For example, “nail care kits comprising nail polish, nail varnish, cotton balls for cosmetic purposes, and nail clippers” are in International Class 3 because a majority of those items are classified in International Class 3 (“nail clippers” being the only item classified in International Class 8).
If no items in a shared-theme kit are more dominant than any other item, the international class for the kit is that of the first item listed after the wording “comprising.” See id. For example, “baking kits comprising cake pan and cake mix” are in International Class 21 (the class for “cake pans”), and “baking kits comprising cake mix and cake pan” are in International Class 30 (the class for “cake mixes”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item].” See id. Generally, the international class for this type of kit is the international class of the product being made. For example, “kits for making bird feeders” are classified in International Class 21 (the class for “bird feeders”), and “kits for making clocks” are classified in International Class 14 (the class for “clocks”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
Additional information and suggestions are given below in bold and brackets. Applicant may adopt the following identification, if accurate:
“Rubber cement for repairing pneumatic tires; nitrogen caps, namely, nitrogen compounds,” in International Class 1.
“Tire screwdrivers, namely, air screwdrivers, electric screwdrivers for use on tires; tire valve tools, namely, [specify by common commercial name, e.g., pneumatically operated tire inflation machine],” in International Class 7.
“Tire screwdrivers, namely, hand operated screwdrivers for use on tires; tire valve tools, namely, [specify by common commercial name, e.g., hand-operated valve spring depressors],” in International Class 8.
“Tire pressure gauges; digital tire pressure gauges; tire tread depth gauges,” in International Class 9.
“Tire inflators; tire plug kits with reamers comprising tire plugs and tire repair patches; tire repair plugs; tire tube patch kits comprising tire plugs and tire repair patches; tire repair patches; tire valves; tire valve caps; tire valve sleeves; nitrogen caps, namely, vehicle tire valve stem caps,” in International Class 12.
Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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. See TMEP §1402.04.
Multiple-Class Application
(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 five classes; however, applicant submitted a fee(s) sufficient for only four 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.
Response Guidelines
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
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 or e-mail without incurring this additional fee.
/Matt Einstein/
Matt Einstein
Trademark Examining Attorney
Law Office 115
(571) 272-8251
matt.einstein@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.