UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 10/4/2018

 

STATUS OF THE APPLICATION

 

This Priority action responds to applicant’s communication dated September 07, 2018, where applicant:

 

(1)  Argued against Likelihood of Confusion in response to the Prior Pending Application Advisory;

(2)  Amended the identification of goods in response to the Identification Requirement;

(3)  Amended the mark description in response to the Description of the Mark Requirement.

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)  The applicant’s arguments against Likelihood of Confusion are persuasive and the Prior Pending Advisory is obviated;

(2)  The Identification of Goods and Services Requirement is maintained;

(3)  The Examining attorney raises a new issue as to the foreign registration.

 

ISSUES APPLICANT MUST ADDRESS: On September 28, 2018, the trademark examining attorney and attorney of record, Brian Boon, discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES

• Identification/Classification of Goods/Services Requirement
• Clarification of Number of Classes to be Registered Requirement
• Multiple-Class Application Advisory
• Foreign Registration Requirement

 

The wording “custom made phase change materials, namely materials comprising a chemical solution or gel that can be heated or cooled for temperature control purposes” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, Class 001 is for chemicals whereas goods that are composed of chemicals or are coated in chemicals are generally classified based on the type of good. The wording “materials comprising a chemical solution or gel” makes it unclear if they applicant’s goods are the chemical solution or if the applicant is referring to a good that is coated in chemicals. Therefore, the applicant should clarify the type of goods they provide. Based on the other goods in the application and the discussions with the attorney of record, the Examining attorney has suggested goods in Class 001. If this is not correct, the applicant must properly identify and classify the goods.

 

The wording “Large-scale reusable or non-reusable packaging, namely, packaging materials, containers, boxes, cartons primarily made of paperboard, corrugated paperboard, and sheets primarily made of paperboard, corrugated paperboard and/or plastics” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, Class 016 is generally for paper goods and printed matter. Due to the placement of commas and the way this identification is worded, the identification could reasonable be read to mean that only the cartons are primarily made of paperboard, corrugated paperboard, etc. Therefore, the applicant needs to either amend the wording to make it clear that all of the goods appearing after “namely” are made of the materials listed, or needs to otherwise properly classify and identify these goods. Based on the other goods in the application and the discussions with the attorney of record, the Examining attorney has suggested goods in Class 016. If this is not correct, the applicant must properly identify and classify the goods.

 

The wording “fine shrink film for use in automatic machines” in the identification of goods must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the applicant must specify the type of “automatic machine” that the shrink film is used in (e.g. automatic packaging machines).

 

The wording “radiant heat barrier systems, comprised of polymer films coated with a thin layer of aluminum” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, “indoor radiant heating systems” are in Class 011, whereas, “radiant heat resistant film” is in Class 017.

 

The wording “coated sheets” in the identification of goods must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the applicant must specify what the sheets are coated in (e.g. chemical coated sheets).

 

The wording “Insulating materials, namely, insulating sheets, insulating paper and insulating tapes, reflective sheets and panels, laminated polyethylene sheets, reflective sheeting, floor insulation, heat reflective barriers, vapour control layers, polyethylene laminates incorporating coated reflective film, aluminised barrier film, thermal insulating materials, radiant heat barrier systems, comprised of polymer films coated with a thin layer of aluminum and coated sheets and vapour barriers, for general use and for use in boxes, packaging and transportation containers,” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, Class 017 is generally for rubber goods. Due to the placement of commas and the way this identification is worded, the identification could reasonable be read to mean that only the “vapour barriers” are “for general use and for use in boxes, packaging and transportation containers.” Therefore, the applicant needs to either amend the wording to make it clear that all of the goods appearing after “namely” are for those uses or needs to otherwise properly classify and identify these goods. Based on the other goods in the application and the discussions with the attorney of record, the Examining attorney has suggested goods in Class 017. If this is not correct, the applicant must properly identify and classify the goods.

 

The wording “Foam protective sections, in tube, sheet and sleeve form” in the identification of goods must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the wording “protective sections” is unclear. The applicant should use generic wording for goods where applicable. Additionally, the applicant should specify the purpose of the goods (e.g. for use in packaging).

 

The wording “thermal insulating textiles in the form of inserts and sheet layers and related materials, namely, woven and non-woven textile products for packaging,” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, Class 017 is generally for rubber goods whereas textile products are generally in Class 024 with fabrics. One exception for this is that thermal insulating covers including textile inserts use in packaging are correctly classified in Class 017. Therefore, the additional wording “woven and non-woven textile products” that was added in the amendment is outside of the scope of the original foreign application. For a U.S. application based on Section 44, an applicant is required to list only goods and services that are within the scope of the goods and services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification of goods and services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

The wording “vacuum flasks, insulated containers, jugs, boxes, chests, insulated packs, insulated bottle bags, and steel vacuum flasks for the transportation of medicines and chilled and frozen foods,” in the identification of goods must be clarified because the wording is too broad and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, Class 021 is for housewares and glass, including goods used for the household transport of frozen foods. However, goods specifically adapted for the transport of medicines are properly classified in Class 010.

 

Applicant may adopt the following wording, if accurate (suggested edits in bold):

 

Class 001: Custom made phase change materials, namely, chemical solutions or gels that can be heated or cooled for temperature control purposes; Chemical compounds for heat retaining; Chemical compounds and suspensions for generating heat for use in temperature controlled transport and packaging systems; Chemical preparations being heat exchange substances packaged in sachets for use in the temperature control of insulating containers

 

Class 006: Metal foil, namely, aluminum foil; Metal sheets and panels incorporating an aluminum film; Metallized reflective sheeting; Metal containers for transport of goods

 

Class 010: Insulated carriers specifically adapted for the transportation of medicine, namely, insulated containers, jugs, boxes, portable ice chests, insulated packs, and insulated bottle bags

 

Class 016: Large-scale reusable or non-reusable packaging, namely, packaging materials, containers, boxes, and cartons, all primarily made of paperboard and corrugated paperboard for industrial packaging; Sheets primarily made of paperboard, corrugated paperboard and/or plastics for wrapping and packaging; Specimen shipping containers made of corrugated paperboard and/or packaging technology materials, namely, materials made from paperboard; Flexographic printed labels, printed sleeve inserts and embossed paper goods for packaging; Materials for packaging, namely, cardboard, corrugated cardboard, paperboard inserts, corrugated paperboard boxes; Foils of plastic for packaging; Cellulose fiber materials, namely, crushed, pulverized, or unraveled waste paper and cardboard for use in panels or containers, packaging covers, shrink covers, sleeves, box inserts, and wide film as packaging materials; Paper and plastic bags and sacks for packaging; Plastic packaging film, namely, plastic film for wrapping, blown film, semi-blown film, flat film, shrink films for heavy goods, fine shrink film for use in automatic [applicant to specify the type of machine, e.g. packaging] machines, stretch films, and embossed films

 

Class 017: Insulating materials, namely, insulating sheets, insulating tapes, reflective insulating sheets and panels, laminated polyethylene sheets, floor covering insulation, heat reflective barriers, polyethylene laminates incorporating coated reflective film, thermal insulating materials, radiant heat resistant polymer films coated with a thin layer of aluminum, insulating [applicant to specify what the sheets are coated in, e.g. chemical] coated sheets and laminated vapour barriers, all for general use and for use in boxes, packaging, and transportation containers; Extruded plastic in the form of sheets for use in manufacture of packaging; Foam insulation in tube, sheet, and sleeve form, for use in packaging; Thermal insulating covers for storage or transportation of goods, namely, thermal insulating textile inserts and sheet layers; Sheets and rolls of cotton wool, plastic foam, and plastic fabric for use as insulation and stopping material in packaging and packing; Insulating materials, namely, low density polyurethane packaging foam and shock absorbent padding for packaging

 

Class 020: Transport containers made of wood or of plastics, or of a combination of wood and plastics, all having thermal insulating properties; Cases of wood and/or of plastics; Industrial packaging containers of wood and/or plastic; Containers for transport, not of metal; Containers made of wood or of plastics, or of a combination of wood and plastics for packaging; Container closures of plastic or mainly containing plastic for packaging; Non-paper and non-metal liquid nitrogen based dry vapor shipping containers

 

Class 021: Reusable, re-freezable ice packs for shipping and packaging use; Household storage containers for chilled and frozen foods; Insulated carriers for the transportation of chilled and frozen foods, namely, vacuum flasks, insulated containers, jugs, boxes, portable ice chests, insulated packs, insulated bottle bags, and steel vacuum flasks; Thermal bags for the transportation of chilled and frozen foods

 

Class 037: Repair and maintenance of insulated shipping containers for transporting room temperature, chilled, and frozen materials; Repair, installation, and maintenance of computer hardware systems for real time monitoring; Repair, installation, and maintenance of computer hardware systems for trouble shooting and data collecting; Repair, installation, and maintenance of computer hardware systems used in storing and handling container and load handling machines in ports and terminals; Repair, installation and maintenance of computer hardware for use in cargo and load handling solutions, port operations, port and terminal equipment; Repair, installation and maintenance of scientific apparatus and instruments for use in cargo and load handling solutions and port operations; Repair, installation and maintenance of port and terminal equipment for use in port and terminal optimization, yard management, and asset management

 

Class 039: Leasing of temperature controlled cases for use in storing and transporting medicines and food; Rental of insulated shipping containers for transporting temperature controlled materials; Packaging and storage of goods; Rental of insulated shipping containers for transporting room temperature, chilled, and frozen materials; Transport, packaging and storage of goods

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See 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.

 

CLARIFICATION OF NUMBER OF CLASSES TO BE REGISTERED REQUIREMENT

 

The application identifies goods that could are classified in at least 9 classes; however, applicant submitted a fee sufficient for 8 classes ONLY. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. 

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

MULTIPLE-CLASS APPLICATION ADVISORY

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 10 classes; however, applicant submitted fees sufficient for only 9 classes. 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FOREIGN REGISTRATION REQUIREMENT

 

Applicant submitted a printout from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. However, the submitted document was not accompanied by a certification from the issuing intellectual property office. A printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office. TMEP §1004.01. 

 

An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.

 

Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).

 

RESPONSE GUIDELINES

 

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.  

 

For this application to proceed further, 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 specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

IMPORTANT GUIDANCE ON RESPONDING TO THIS LETTER: Applicant should use the TEAS “Response to Office Action” online form to file a response. For information on how to respond to this letter, an applicant should review the USPTO’s Trademark Information Network Video number 14, “Response to Office Action,” and webpage for “Responding to Office Actions.” 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

 

 

/Lyal Fox/

Lyal Fox

Trademark Examining Attorney

Law Office 113

571-270-7884

lyal.fox@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 10/4/2018 FOR U.S. APPLICATION SERIAL NO. 87698113

 

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 10/4/2018 (or sooner if specified in the Office action).  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.  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 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.