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: 12/26/2018

 

 

THIS IS A FINAL ACTION.

 

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.  

STRICT DEADLINE TO RESPOND TO THIS LETTER:  To avoid abandonment of applicant’s trademark application, the USPTO must receive a complete response within (1) thirty (30) days of the date of issuance of this letter, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer.

 

This Office action is in response to applicant’s communication filed on November 27, 2018.  The following requirements are now made FINAL: amend wording in the identification of goods.  See 37 C.F.R. §2.63(b).

 

The problem with applicant’s response:  The trademark examining attorney issued an Office action on October 25, 2018.  On November 27,018, applicant filed a response to that Office action that did not appear to address all of the issues raised in the Office action.  Specifically the following issue(s) were not addressed: amending unacceptable wording in the identification of goods.  

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  Applicant provided a properly signed response on November 27, 2018 that did not address the outstanding requirements as to the identification of goods but rather provided an explanation of the capacity of the person who signed the response dated October 25, 2018.  Applicant was informed in the notice of non-responsive amendment dated November 27, 2018 that not only must the response be properly signed but it must also address the outstanding issues.

 

Applicant was informed in the notice of non-responsive amendment dated November 27, 2018 that Applicant must resubmit the entire response, signed by a proper party, or provide an explanation of the signer’s legal authority to bind or represent applicant.  See 37 C.F.R. §§2.17(b)(2), 2.62(b), 2.193(e)(2).  Applicant provided an explanation of the signatory’s capacity, namely “Michael Rohlfs - Designer Is also the General Manager of the Westbrass Inc., and is responsible for filing all USPTO Patents and Trademarks; and most other governmental requirements. Max Homami, President.”  However, a “General Manager” is not a corporate officer and therefore not someone with legal authority to bind a juristic applicant, as in this case applicant is a corporation.  Therefore, this explanation does not render the response from applicant dated October 25, 2018 an acceptably signed response and therefore it is not accepted as a response to the outstanding issues.

 

Applicant was also informed in the notice of non-responsive amendment dated November 27, 2018 that if submitting a newly signed response, applicant must also explicitly address and respond to all the issues raised in the outstanding Office action dated October 25, 2018.  See 37 C.F.R. §2.65(a); TMEP §718.03. 

 

Therefore, applicant must respond to the following requirements.

 

Identification Unacceptable-Indefinite Wording

The wording “Plumbing fittings, namely, Kitchen and Bathroom Plumbing” in the identification of goods is indefinite and must be clarified because the common commercial or generic name of the goods must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to further specify the common commercial or generic name of the goods.  See TMEP §1402.01.  For example, the wording “Plumbing fittings namely, Kitchen and Bathroom valves” is acceptable in Class 11.

 

The wording “Plumbing fittings, namely, bibbs; Plumbing fittings, namely, cocks; Plumbing fittings, namely, couplers; Plumbing fittings, namely, drains; Plumbing fittings, namely, faucet filters; Plumbing fittings, namely, shower control valves; Plumbing fittings, namely, sink strainers; Plumbing fittings, namely, spouts; Plumbing fittings, namely, traps; Plumbing fittings, namely, tub control valves; Plumbing fittings, namely, valves; Plumbing fixtures, namely, shower mixers; Plumbing fixtures, namely, shower sprayers; Plumbing fixtures, namely, sink sprayers; Plumbing fixtures, namely, sink traps; Plumbing supplies, namely, sink strainers; Flexible pipes being parts of basin plumbing installations; Flexible pipes being parts of bath plumbing installations; Flexible pipes being parts of shower plumbing installations; Flexible pipes being parts of sink plumbing installations; Manually-operated plumbing valves; Strainers for plumbing drains” is acceptable as filed in Class 11.

 

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.

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class 11 will be deleted from the application: Plumbing fittings, namely, Kitchen and Bathroom Plumbing.  The application will then proceed with the following goods in International Class 11 only: Plumbing fittings, namely, bibbs; Plumbing fittings, namely, cocks; Plumbing fittings, namely, couplers; Plumbing fittings, namely, drains; Plumbing fittings, namely, faucet filters; Plumbing fittings, namely, shower control valves; Plumbing fittings, namely, sink strainers; Plumbing fittings, namely, spouts; Plumbing fittings, namely, traps; Plumbing fittings, namely, tub control valves; Plumbing fittings, namely, valves; Plumbing fixtures, namely, shower mixers; Plumbing fixtures, namely, shower sprayers; Plumbing fixtures, namely, sink sprayers; Plumbing fixtures, namely, sink traps; Plumbing supplies, namely, sink strainers; Flexible pipes being parts of basin plumbing installations; Flexible pipes being parts of bath plumbing installations; Flexible pipes being parts of shower plumbing installations; Flexible pipes being parts of sink plumbing installations; Manually-operated plumbing valves; Strainers for plumbing drains.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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 12/26/2018 FOR U.S. APPLICATION SERIAL NO. 88019132

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 12/26/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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.