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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/25/2017

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on May 2, 2017.

 

In the Response, the applicant presented arguments against the Section 2(e)(2) refusal and amended the identification of goods.  The Section 2(f) claim of acquired distinction based on prior registrations has been accepted and overcomes the Section 2(e)(2) refusal. 

 

The requirement for a definite and accurate identification of goods is MAINTAINED and now made FINAL for the reasons discussed below.  See 37 C.F.R. §2.63(b).

 

FINAL IDENTIFICATION OF GOODS REQUIREMENT

 

In the Response, the applicant amended the identification of goods.  The amended identification of goods is largely acceptable, however, the wording “electric bench grinders, electric mower blade grinders, and grinder accessories, namely, grinding wheels, grinding stones, wheel dressing tools, grinder stands, mulching blade adaptors, grit collectors and replacement parts therefor” remains overly broad as this clause includes goods that are properly classified in Class 8.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, a “grinding wheel” is classified in Class 7 if it is a power-operated grinding wheel, but in Class 8 if it is manually operated.  The wording “wheel dressing tools” appears to apply to a specific variety of hand tool, and is therefore properly classified in Class 8, not Class 7, as shown by the attached evidence.  Finally, the wording “manual tire changer machines for outdoor power equipment tires” is unclear – a “tire changer machine” is properly classified in Class 7 as a type of machine and it is not understood what a “manual” machine would entail. 

 

As the applicant was previously advised, the applicant must provide a definite and properly classified identification of goods. 

 

The applicant may adopt the following wording, if accurate: 

 

Class 7:  Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, lawn and garden edgers, log splitters, post hole diggers in the nature of powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor; structural parts and fittings for outdoor power equipment and parts and fittings for internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel caps and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons for engines, tie straps for saw chain, carburetors, throttle controls for outdoor power equipment in the nature of replacement throttle levers and cables, starters for motors and engines, engine mufflers and spark plugs; machine parts, namely, bearings, bushings, control cables for outdoor equipment, idling and pulleys being parts of machines; belts for machines; clutches for machines; drive chains being parts of machines; drive parts for machines, namely, idler sprockets, gears, drive pins, drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads and blades; lawn mower parts, namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and electric grinder accessories, namely, power operated grinding wheels, grinding stones, wheel dressing tools, grinder stands, mulching blade adaptors, grit collectors and replacement parts therefor; power-operated grinding wheels; electric rivet spinners, namely, machines for joining loops of saw chain; snow thrower replacement parts, namely, augurs, scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands for machines; manual tire changer machines for outdoor power equipment tires; mower sulkies

 

Class 8:  accessories for grinders, namely, manually operated grinding wheels, wheel dressing tools

 

Class 22 is definite and does not require amendment. 

 

Note that bolding, italics, and the like are used only to highlight suggested changes to the original language.

 

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 REQUIREMENTS

 

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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 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

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Natalie L. Kenealy/

Examing Attorney

Law Office 104

571-272-7817

Natalie.Kenealy@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.