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: 4/30/2019

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 6, 2019.

 

In a previous Office action dated October 29, 2018, applicant was required to satisfy the following requirement:  properly amend and classify the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been partially satisfied: some of the identifications have been properly amended and classified.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Properly Amend and Classify the Identification of Goods-FINAL

 

Identification of Goods-FINAL

 

The identification of goods is unacceptable as indefinite.  The applicant must clarify the identification of goods by specifying what is meant by “Machine tools; power operated tools; sweepers” because these descriptions are overly broad and require greater specificity.  Furthermore, the wording “jigsaw; air inflator kit, namely, tire inflator kit comprised of tire inflator with gauge, coupler, plugs, nozzles, needles, chuck, nipples, thread seal tape, hose; angle grinder accessories, namely, sand paper, grinding plates, brushes, fiber discs with plastic holders; hot air gun, namely, heat gun used to emit a stream of hot air; solar electricity complete package comprised of photovoltaic modules, solar charge controller, voltage converter, assembly material” is misclassified and refers to goods in other International Classes.  See TMEP §1402.01.  Lastly, the following goods need further clarification to determine the common commercial name or the type of goods actually being provided: “air basic assortment in the nature of air cut-off tool, air die grinder, air chisel with chisel bits; air nail/staple kit comprised of air nail/staple gun, safety striker pin, depth adjustment dial, low nail/staple indicator window, LED worklight, LED battery and function indicator, nails, staples, ergonomic soft grip handle, side belt hook, hex key; hammer drill; hole saw set comprised of hole saws, adaptors, hex allen key, plastic case; impact screwdriver; cordless screwdriver; rope hoist; special drills; bench drills; jigsaw skin, namely, jigsaw without battery and charger; hammer drill skin, namely, hammer drill without battery and charger; impact driver skin, namely, impact driver without battery and charger; cordless hammer drill skin, namely, cordless hammer drill without battery; multifunction tool, namely, cordless multifunction tool for sawing, grinding, cutting and scraping; impact wrench skin, namely, impact wrench without battery and charger; drill with brushless motor skin, namely, drill with brushless motor without battery and charger; air compressor skin, namely, air compressor without battery and charger; angle grinder skin, namely, angle grinder without battery and charger; cordless grass and bush trimmers; cordless lawn trimmers; cordless hedge trimmers; cordless pole pruners; petrol-brushcutter; garden pump; garden trimmer line; mulcher; cordless mini trimmer; cordless line trimmer skin, namely, cordless line trimmer without battery and charger; cordless hedge trimmer skin, namely, cordless hedge trimmer without battery and charger; cordless mower skin, namely, cordless mower without battery and charger; water supply machines, namely, electric water pumps.”

 

**Please Note: Suggested Acceptable Descriptions appear in Bold/Italicized font.  Unacceptable descriptions appear Underlined/Bold.

 

Applicant may adopt the following identification(s), if accurate:

 

International Class 03: Angle grinder accessories, namely, sandpaper, grinding plates, brushes, fiber discs with plastic holders

 

International Class 06: [ACCEPTABLE AS WRITTEN]

 

International Class 07: Machine tools, namely, {applicant must specify the type of machine tools by common commercial name preferably by inserting the various machine tools listed below, within this description}; power operated tools, namely, {applicant must specify the type of power operated tools by common commercial name preferably by inserting the various power operated tools that are listed below, within this description}; cutting, drilling, abrading, sharpening and surface treatment machines and apparatus and portable air tools, namely, battery-operated screw driller; power operated tools, namely, air basic assortment in the nature of air cut-off tool, air die grinder, air chisel with chisel bits; power operated tools, namely, air cut off; air die grinder; power operated tools, namely, air inflator kit comprised of air blow gun, gauge, couplers, connectors, nozzles, chucks, needles, needle adapter, thread seal tape; power operated air nail/staple gun kit comprised of air nail/staple gun, safety striker pin, depth adjustment dial, low nail/staple indicator window, LED worklight, LED battery and function indicator, nails, staples, ergonomic soft grip handle, side belt hook, hex key; battery-operated rotary percussion drill; angle grinder; ash and coarse dirt vacuum; band saw; belt grinder; power planer; drill hammer; brush cutter; cutting and grinding discs; demolition breaker; drill powered pump; drill press; accessories for compressed air, namely, air orbital sander, air chisel, spot blaster, air filter, regulator and lubricator, air impact wrench, air shears, air hose reel, air nailer/stapling gun, air ratchet wrench; power-operated multipoint tool; gas appliances in the nature of gas heater, gas cartridge; gas soldering iron; power operated tools, namely, hammer drill; automatic domestic water system comprised of electronic pressure pumps; high pressure cleaner, namely, high pressure washers; high pressure surface cleaner; hobby tool kit accessory in the nature of electric glue gun, electric engraver; high pressure pipe cleaner; high pressure scrubber; power operated, hole saw set comprised of hole saws, adaptors, hex allen key, plastic case; inverter generator; inverter welding machine; compressor for increasing the pressure of a gas by reducing its volume; mobile compressor for increasing the pressure of a gas by reducing its volume; circular saw blades; mouse sander; paint compressor; power operated impact screwdriver; power operated cordless screwdriver; drill bits for power drills; power operated rope hoist; sliding mitre saw; sliding mitre saw stand; power operated special drills; jigsaw blades for power jigsaws; power operated bench drills; power producers in the nature of electricity generator; table saw; reciprocating saw skin, namely, reciprocating saw without battery; mouse sander skin, namely, mouse sander without battery; spray gun skin, namely, spray gun without battery and charger; worklight skin, namely, worklight without battery; jigsaw skin, namely, power operated jigsaw without battery and charger; hammer drill skin, namely, power operated hammer drill without battery and charger; impact driver skin, namely, power operated impact driver without battery and charger; cordless hammer drill skin, namely, power operated cordless hammer drill without battery; circular saw; multifunction tool, namely, power operated cordless multifunction tool for sawing, grinding, cutting and scraping; impact wrench skin, namely, power operated impact wrench without battery and charger; drill with brushless motor skin, namely, power operated drill with brushless motor without battery and charger; air compressor skin, namely, power operated air compressor without battery and charger; angle grinder skin, namely, power operated angle grinder without battery and charger; power drills and bores; screwdrivers, electric; power operated saws; machine tools for sawing; soldering irons, gas-operated; gas-operated blow torches; air spray guns, namely, power-operated spray guns; spray paint machines, namely, spray paint systems comprised of pumps, pump controllers, nozzles, tubing and valves; air hose reels, being power operated hose reels; electric gardening tools and horticultural machines, namely, 4 in 1 garden tool, 5 in 1 garden tool;

power operated cordless grass and bush trimmers; power operated cordless lawn trimmers; power operated cordless hedge trimmers; power operated cordless pole pruners; power operated petrol brush cutter; gas operated mower; gas operated blower; electric edger; electric leaf blower; electric scarifier; garden mower; power operated garden pump; power operated garden trimmer line; gas operated hedge trimmer; electric sweepers; gas operated lawn edgers; electric line trimmers; mower; electric mowers; power operated mulcher; tractor lawn mower; power operated, cordless mini trimmer; cordless line trimmer skin, namely, power operated, cordless line trimmer without battery and charger; cordless hedge trimmer skin, namely, power operated, cordless hedge trimmer without battery and charger; cordless mower skin, namely, power operated, cordless mower without battery and charger; power operated blowers; electric garden pumps; solar power electricity generators; hoists; compressors, namely, electric compressors; air compressors; high pressure washers; electric cordless sweepers; suction machines for scavenging purposes; vacuum cleaning machines for use in households, namely, vacuum cleaners; water supply machines, namely, electric water pumps for {applicant must specify the purpose, e.g. swimming pools, spas, baths, and whirlpools}; circular saw blades being parts of machines; discs for cutting for use with power tools; grinding discs being parts of machines; drill bits for rotary power tools; cutters for milling machines; power operated sharpeners; sanding disks for use with machines; wire brushes for use in machines; generators of electricity; water pumps for pumping water out of flooded basements

 

International Class 08: Drill bits for hand drills; frames for handsaws; hand-operated jigsaws;

 

International Class 09: Digital multimeter; borescopes for inspecting work; endoscopy cameras for industrial purposes; infrared thermometers not for medical use; lasers for measuring purposes; levels being level indicators and level measuring machines; distance measuring apparatus; measuring apparatus, namely, distance measurer, humidity measurer; batteries, electric; chargers, namely, battery chargers; ultrasonic wave type intruder sensors; Tyre-pressure measurers; manometers; chargers for batteries; batteries for use of power tools; solar electricity complete package comprised of photovoltaic modules, solar charge controller, voltage converter, assembly material

 

International Class 10: [ACCEPTABLE AS WRITTEN]

 

International Class 11: Appliances for water distribution, namely, water fountains for use in the garden; electric lamps; portable hand lamps; gas lamps; bunsen burners for laboratory use; gas cookers; heat generators and hydrogen generators; hot air gun, namely, heat gun used to emit a stream of hot air

 

International Class 12: Air inflator kit, namely, tire inflator kit comprised of tire inflator with gauge, coupler, plugs, nozzles, needles, chuck, nipples, thread seal tape, hose

 

International Class 17: [ACCEPTABLE AS WRITTEN]

 

International Class 20: [ACCEPTABLE AS WRITTEN]

 

International Class 21: Devices for pest and vermin control, namely, ultrasonic vermin repellent; non-mechanized pet waterers in the nature of portable water dispensers for pets; non-electric carpet sweepers

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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.

 

Classification

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 03, 06, 07, 08, 09, 10, 11, 12, 17, 20 and/or 21.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Multiple Class Application

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 that are classified in at least 11 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Fees

 

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.

 

Proper Response to Final Office Action-Partial Requirements

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final requirements apply will be deleted from the application by Examiner’s Amendment:  “Machine tools; power operated tools; sweepers; jigsaw; air inflator kit, namely, tire inflator kit comprised of tire inflator with gauge, coupler, plugs, nozzles, needles, chuck, nipples, thread seal tape, hose; angle grinder accessories, namely, sand paper, grinding plates, brushes, fiber discs with plastic holders; hot air gun, namely, heat gun used to emit a stream of hot air; solar electricity complete package comprised of photovoltaic modules, solar charge controller, voltage converter, assembly material;  air basic assortment in the nature of air cut-off tool, air die grinder, air chisel with chisel bits; air nail/staple kit comprised of air nail/staple gun, safety striker pin, depth adjustment dial, low nail/staple indicator window, LED worklight, LED battery and function indicator, nails, staples, ergonomic soft grip handle, side belt hook, hex key; hammer drill; hole saw set comprised of hole saws, adaptors, hex allen key, plastic case; impact screwdriver; cordless screwdriver; rope hoist; special drills; bench drills; jigsaw skin, namely, jigsaw without battery and charger; hammer drill skin, namely, hammer drill without battery and charger; impact driver skin, namely, impact driver without battery and charger; cordless hammer drill skin, namely, cordless hammer drill without battery; multifunction tool, namely, cordless multifunction tool for sawing, grinding, cutting and scraping; impact wrench skin, namely, impact wrench without battery and charger; drill with brushless motor skin, namely, drill with brushless motor without battery and charger; air compressor skin, namely, air compressor without battery and charger; angle grinder skin, namely, angle grinder without battery and charger; cordless grass and bush trimmers; cordless lawn trimmers; cordless hedge trimmers; cordless pole pruners; petrol-brushcutter; garden pump; garden trimmer line; mulcher; cordless mini trimmer; cordless line trimmer skin, namely, cordless line trimmer without battery and charger; cordless hedge trimmer skin, namely, cordless hedge trimmer without battery and charger; cordless mower skin, namely, cordless mower without battery and charger; water supply machines, namely, electric water pumps.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed with the remaining acceptable goods/classes. 

 

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).

 

 

 

 

 

 

 

 

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.  

 

 

 

/Jay K. Flowers/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 112

571.272.8202

jay.flowers@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 4/30/2019 FOR U.S. APPLICATION SERIAL NO. 88052084

 

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 4/30/2019 (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.