UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)Emergency LED

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: 2/24/2018

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On February 21, 2018, the trademark examining attorney and David A.W. Wong 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 of Goods;
• Foreign Registration;
• Mark Description.

 

Identification of Goods:

 

The identification of goods is indefinite and must be clarified because further specification and information is required about some of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

The wording “emergency flares” is no longer acceptable wording because it is overbroad. The applicant may adopt “emergency LED signalling flares.”

The wording “candle lanterns” was deleted because candle lanterns is overbroad wording that includes lanterns in the nature of lighting apparatus in Class 11 and lanterns in the nature of candle holders in Class 21. This wording is no longer acceptable.

The wording “emergency lights” is misclassified. The goods are classified incorrectly. Applicant must amend the application to classify the goods in International Class 9.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

Applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.

The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

Applicant may adopt the following identification, if accurate: 

 

International Class 5:

 

first aid kits; insect repellents.

 

International Class 7:

 

motors for boats; engines for boats; electric generators; electric power generators for boats.

 

International Class 8:

 

Knives; filleting knives; gardeners' knives; blades for knives; scalpels, namely, hobby knives; table cutlery, namely, knives, forks and spoons.

 

International Class 9:

 

Emergency LED signalling flares; protection and safety apparatus, namely, inflatable flotation devices; emergency warning lights.

 

International Class 11:

 

Portable camping stoves; charcoal grills; barbecue grills; torches, namely, flashlights; flashlights utilizing electric rechargeable devices; electric lanterns; lanterns for lighting; emergency lamps; electric heaters for commercial use.

 

International Class 12:

 

Boats.

 

International Class 18:

 

All-purpose carrying bags for use by campers; hunter’s game bags; hunting accessories, namely, hunting bags, backpacks, hunting gear bags, duffle bags.

 

International Class 20:

 

camping furniture; camping mattresses, beds, camp beds, foam camping mattresses; furniture for camping; metal furniture and furniture for camping; portable folding chairs.

 

International Class 21:

 

camping grills; cooking grills; portable pots and pans for camping; water bottles sold empty;  non-electric portable coolers; cooking utensils, namely, (list the common commercial name of the goods);  dishes; portable water carriers and containers made of plastics, namely, plastic water bottles sold empty.

 

International Class 22:

 

camping tents; tents for camping; hammocks.

 

International Class 24:

 

Bed blankets; woollen blankets; bed linen and blankets; sleeping bags.

 

International Class 25:

 

clothing, namely, (list the common commercial name of the goods); footwear, footwear rubbers fishing footwear; sports footwear; fishing vests; hunting vests; hunting jackets; hunting pants; hunting boots; thermal underwear.

 

International Class 28:

 

Fishing tackle; fishing equipment, namely, (list the common commercial name of the goods); fishing rods; hunting game calls; hunting lures.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Recitation and Identification Amendment Advisory:

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification/recitation.

 

Mark Description:

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of a red curved square surrounding a dark red leaf, all to the left of the word BANUK displayed in the color gray. The color white appearing in the drawing represents background or transparent regions and is not claimed as a feature of the mark.

 

The color(s) red and gray is/are claimed as a feature of the mark.

 

Foreign Registration:

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign 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)

 

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.  

 

/LDA/

Lourdes Ayala, Attorney at Law

Law Office 106

Telephone Number 571-272-9316

Fax: 571-272-9106

Lourdes.Ayala@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 2/24/2018 FOR U.S. APPLICATION SERIAL NO. 87735643

 

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 2/24/2018 (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.