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: 10/31/2018

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.  Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.

 

Search Results

 

The trademark examining attorney has searched the Office’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).

 

Summary of Issues

 

• Name of an Individual
• Identification of Goods/Services
• Disclaimer

 

Name of an Individual

 

Applicant must clarify whether the name ROGER ZATKOFF in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)       The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “{ROGER ZATKOFF} identifies {specify actual name}, a living individual whose consent is of record.”

 

(2)       A written consent, personally signed by the named individual(s), as follows:  “I, {specify name}, consent to the use and registration of my name, ROGER ZATKOFF, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.uspto.gov/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

 

Identification of Goods/Services

 

A portion of the identification of goods and services is unacceptable and must be clarified because it is too broad and/or misclassified.  See TMEP §1402.01.   The Office requires a degree of particularity necessary to clearly identify the goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966). 

 

Additionally, applicant has used the same language to describe goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(c).  Specifically, International Class 007 and 017 appear to be identical.

 

Generally, identical language cannot be used to describe goods in more than one international class.  TMEP §1401.05(c).  For the USPTO to determine the proper classification of applicant’s goods, applicant must specify the nature of the goods or purpose for which they are being used.  Id. 

 

For example, “clock radios” is unacceptable because it refers to goods in more than one international class – “radios” are classified in International Class 9 and “clocks” are classified in International Class 14 – and does not clearly indicate which would be the appropriate international class.  The following identifications, however, would be acceptable:  “radios incorporating clocks” in International Class 9 and/or “clocks incorporating radios” in International Class 14.  See TMEP §1401.05(c) for more information about this issue.

 

In this case, classification would be determined by the nature of the goods or purpose for which they are being used.  Thus, applicant must amend the identification to specify the nature or purpose of the goods using wording that is relevant to each designated international class.  See id. 

 

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 at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Applicant may adopt the following identification, if accurate.  (Changes shown in bold italics):

 

International Class 004:

 

            All-purpose lubricants, - [moved from International Class 007]

 

International Class 006:

 

metal seals for use in {indicate field of use}, - [moved from International Class 007 - note that metal gaskets for vehicle engines are classified in Class 7 as engine parts - not in Class 6]

 

International Class 007: 

 

Seals, o-rings, gaskets, and other packings and sealing products, namely,

 

adhesives, – [moved to International Class 017]

 

bellows being parts of machines for sealing – [must specify being machines or parts of machines - clarify “boot” wording or delete]

 

braided packings, - [moved to International Class 017]

 

coatings, - [moved to International Class 017]

 

extrusions, - [clarify the type of extrusions and possibly reclassify – extrusion machines are in International Class 007 but extrusions are in International Class 017 and 019]

 

lathe cut, - [clarify as this wording is not clear as to whether lathes are intended or something else]

 

linear bearings, as parts of machines for sealing – [bearing systems is not clear]

 

lubricants, - [moved to International Class 004]

 

metal seal rings for use with machines, - [other options shown above in  International Class 006]

 

gaskets and metal seal retaining rings as engine parts, - [Note that metal gaskets for vehicle engines are classified in Class 7 as engine parts - not in Class 6]

 

molded rubber, - [moved to International Class 017]

 

molded packing material for forming seals – [clarify packings]

 

oil seals, – [moved to International Class 017]

 

o-rings being machine parts for {indicate general types of machines, e.g., sorting machines, packaging machines, etc.}

 

PTFE seals, – [moved to International Class 017]

 

pumps, - [clarify how pump is a packing or sealing product]

 

sheet and gasket materials, – [moved to International Class 017]

 

and wear rings being parts of machines for sealing – [clarify as a packing or sealing product in this class]

 

International Class 017: 

 

Seals, o-rings, gaskets, and other packings and sealing products, namely, - [o-rings are in International Class 007]

 

Adhesives sealants for general use,

 

Braided packing material for forming seals – moved from International Class 007 and clarified

 

Insulating coatings – moved from International Class 007 and clarified

 

Molded rubber, - [moved from International Class 007]

 

Sealing and insulating materials in the nature of oil seals, PTFE seals - [moved from International Class 007 and clarified]

 

Gasket material in sheets for use in {indicate specific field of use} - [moved from International Class 007 and clarified]

 

 

International Class 035: 

 

Design services in the field of seals – [moved to International Class 042]

 

International Class 039: 

 

Distribution services, namely, delivery of seals, o-rings, gaskets, and other packings and sealing products, namely, adhesives, boots/bellows, braided packings, coatings, extrusions, lathe cut, linear bearing systems, lubricants, metal seals, gaskets and retaining rings, molded rubber, molded packings and seals, oil seals, o-rings, PTFE seals, pumps, sheet and gasket materials, and wear rings

 

International Class 040: 

 

Manufacturing services in the field of seals, o-rings, gaskets, and other packings and sealing products, namely, adhesives, boots/bellows, braided packings, coatings, extrusions, lathe cut, linear bearing systems, lubricants, metal seals, gaskets and retaining rings, molded rubber, molded packings and seals, oil seals, o-rings, PTFE seals, pumps, sheet and gasket materials, and wear rings

 

International Class 042: 

 

Design services in the field of seals – [moved from International Class 035]

 

 

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).

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for each of the above current and suggested classes. See more information about specimens.

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim COMPANY because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  The term COMPANY is merely an entity designation and carries no trademark significance.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “COMPANY” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

 

 

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.  

 

 

 

/Kyle Christopher Peete/

Trademark Attorney  [Law Office 112]

(571) 272-8275 (Phone) 

(571) 273-8275 (Fax)

kyle.peete@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.