To: | Nisshin Steel Co., Ltd. (email@oliff.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87593839 - NSS - 175534 |
Sent: | 6/28/2018 2:40:14 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87593839
MARK: NSS
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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: Nisshin Steel Co., Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL 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. 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: 6/28/2018
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on June 4, 2018.
1. Advisory – Potential Refusal and Requirement Withdrawn:
2. Advisory – Final Requirement:
3. Final Requirement – Identification of Goods – FINAL:
A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). To "specify" means to name in an explicit manner. The identification should set forth common names, using terminology that is generally understood. The identification of goods and/or 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); The 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 The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953). TMEP §1402.01.
The wording in the identification of goods is unacceptable because it is indefinite and too broad. The wording requires clarification and could include goods that are classified in more than one International Class. See TMEP §§1402.01, 140203. Notations concerning unacceptable wording are specified in bold italics in the suggestion below.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e). PLEASE NOTE: Applicant must delete any duplicate entries in the identification of goods.
Applicant may substitute the following wording, if accurate:
International Class 006:
Irons and steels; nonferrous metals and their alloys; metal materials for building and construction, namely, chimney shafts of metal, stair treads of metal, fasteners for casement windows of metal, guardrails of metal, wall linings of metal, pilings of metal, gratings of metal, tunneling materials in the nature of metal pilings, fences of metal, metal shutters for building or construction, water-pipes of metal, tiles of metal, steel frames for building, boards of metal for shelves as metal materials for building or construction, hinges of metal, handrails of metal, ceiling boards of metal, doors of metal, pillars of metal, wainscotings of metal, metal beams, fire retarding doors of metal, windows of metal, window frames of metal, gates of metal, floor boards of metal for building or construction, louver doors of metal, laths of metal, frames of metal, solar battery module frame in the nature of mounts for solar batteries, metal roofing, roofing tiles of metal, roofing of metal, metal wallboards, exterior materials of metal in the nature of sheet metal, cladding of metal, reinforcing materials of metal, wall, floor and roofing panels of metal, metal ceiling boards for building or construction, duckboards of metal, roof purlins of metal, roof rafters of metal, sleepers of metal used for flooring support, joists of metal, braces of metal, diagonal beams of metal, girders of metals in the nature of support beams, metal hardware in the nature of metal supports for column bases, roof trusses of metal, roof gables of metal, metal plates for diagonal beams, and metal joinery fittings; metal hardware, namely, metal screw rings, washers of metal, reinforcing materials of metal for building, buckles of common metal, binding screws of metal for cables, and stops of metal for use in connection with solar panel mounts; prefabricated building assembly kits of metal; metal hardware, namely, security locks, keys for locks, cut nails, metal screw rings, casters of metal, nails, wedges of metal in the nature of [please identify the goods by common commercial or generic name] and pegs of metal, chains of metal, washers of metal, nuts of metal, padlocks, screws, metal fixtures for ropes for use with swimming pools in the nature of [please identify the goods by common commercial or generic name], plugs of metal, bolts of metal, rivets, reinforcing materials of metal for concrete, hardware in the nature of buckles of common metal, binding screws of metal for cables, and [please identify the type of stop, e.g., door, date, etc.] stops of metal; reservoirs of metal; industrial packaging containers of metal; metal moulds for forming cement, namely, metal casting forms for concrete for use in building and construction; metal pulleys; metal springs and valves, not machine elements; metal junction for pipes; metal flanges; upright sign boards of metal; loading and unloading pallets of metal; turn-tables for load handling in the nature of [please identify the goods by common commercial or generic name and classify appropriately]; containers of metal for transport; traversers for load handling in the nature of [please identify the goods by common commercial or generic name and classify appropriately]; steel strip; artificial fish reefs of metal; steel sheets; steel plates; steel pipes and tubes; paint spraying booths of metal; section steel, namely, shaped cold-finished steel bars for use in connection with frames of metal, solar battery module frame, metal components for automobiles, furring strips of metal, vinyl plastic hothouses, metal materials for building or construction, prefabricated building assembly kits of metal, metal beams, pillars of metal, steel frames for building, reinforcing materials of metal, diagonal beams of metal, girders of metal, H-steel, steel angles, channel shaped steels, and I-steel; poultry cages of metal; corrugated steel plates; beacons of metal, non-luminous; road signs of metal, not luminous nor mechanical; railway points; metal keys for locks; cotter pins of metal; anchors; mooring bitts of metal; mooring bollards of metal; anvils; swage blocks; wire nets and gauzes; wire ropes; water tanks of metal for household purposes; tool boxes of metal, sold empty; tool chests of metal, sold empty; metal stepladders and ladders; metal nameplates and door nameplate; towel dispensers of metal; hat-hanging hooks of metal; letter boxes of metal; metal hardware, namely, carabiners.
International Class 026:
Buckles of precious metals.
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.
Requirements for a 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). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one 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).
See 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
4. Final Requirement – Particular Goods Exceed Scope of the Foreign Registration – FINAL:
In this case, the U.S. application identifies the particular goods and/or services as follows: “upright sign boards of metal.”
However, the foreign registration identifies the following goods and/or services: “Irons and steels; nonferrous metals and their alloys; ores of metals; metal materials for building or construction; prefabricated building assembly kits of metal; loading and unloading pallets of metal; turn-tables for load handling; traversers for load handling; artificial fish reefs of metal; poultry cages of metal; paint spraying booths of metal; metal moulds for forming cement products; metal pulleys; springs and valves, not machine elements; metal junction for pipes; metal flanges; keys; cotter pins; rail switches; road signs of metal [not luminous nor mechanical]; beacons of metal [non-luminous]; reservoirs of metal; anchors; mooring bitts of metal; mooring bollards of meta; containers of metal for transport; anvils; swage blocks; metal hardware; wire ropes, wire nets and gauzes; industrial packaging containers of metal; metal nameplates and door nameplates; chains for dogs; metal stepladders and ladders; letter boxes of metal; hat-hanging hooks of metal; money boxes of metal; water tanks of metal for household purposes; tool boxes of metal or tool chests of metal; towel dispensers of metal; buckles of metal; ferrules of metal for canes and walking sticks; sculptures of metal.”
These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the signs in the foreign registration are limited to not luminous nor mechanical. Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis. Applicant may amend this wording to, “upright sign boards of metal, not luminous nor mechanical” and this requirement will be withdrawn.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
5. Advisory – Proper Response to a Final Action:
(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).
6. Advisory – TEAS RF Applicants:
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 $125 per 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.
7. Advisory – Assistance:
/Colleen Dombrow/
Trademark Attorney
Law Office 101
Direct Dial: 571-272-8262
Facsimile: 571-273-9101
colleen.dombrow@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.