To: | SATA TOOL (SHANGHAI) LTD. (PTO@LRRC.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87218366 - SATA - 151949.3006 |
Sent: | 9/11/2017 7:54:34 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87218366
MARK: SATA
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: SATA TOOL (SHANGHAI) LTD.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 9/11/2017
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87002729, 86898906 and 86875495
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained: The Section 2(d) refusal and requirement for an acceptable identification of goods.
The applicant’s arguments that the marks and goods are distinguishable are unpersuasive. All of the cited marks begin with the identical wording found in the applicant’s mark, SATA. Additionally, as shown by the evidence attached to the Office action, the applicant’s goods commonly emanate from the same source, under the same name and through the same trade channels. As such, the refusal to register is CONTINUED.
Furthermore, the identification of goods remains indefinite. Specifically, “cutting tools, namely, saws” must indicate these are “hand tools” for proper classification in Class 8. The wording “hand-operated spray guns (excluding spray guns for painting)” contains parentheses that must be removed, e.g., hand-operated spray guns excluding spray guns for painting. The wording “blades, hand tools” must list the common commercial name of the blades, e.g., ditch bank blades, razor blades.
Please note: the requirement for a declaration supporting the application is satisfied. Additionally, the applicant’s amended identification of goods obviates the refusal for goods exceeding the scope of the foreign registration.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Kelly F. Boulton/
Trademark Examining Attorney
Law Office 102
571-272-9247
Kelly.Boulton@uspto.gov (informal questions only)
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.