To: | Milwaukee Electric Tool Corporation (milwaukeeip@milwaukeetool.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88077007 - MXFUEL - 0138-US01 |
Sent: | 11/30/2018 4:58:23 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88077007
MARK: MXFUEL
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CORRESPONDENT ADDRESS: MILWAUKEE ELECTRIC TOOL CORPORATION |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Milwaukee Electric Tool Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/30/2018
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.
SEARCH OF OFFICE’S DATABASE OF MARKS – NO CONFLICTING MARKS
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 Issue(s) Applicant Must Address:
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
Applicant’s goods fall into multiple classes as specifically noted below. Applicant can either add the classes or limit the goods to the classes for which fees have been paid. See generally TMEP §1402.01.
LINK TO ID MANUAL: 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.
CLASS 7: Power tools, namely, rotary hammers, demolition hammers, impact tools, percussion tools, and attachments for use with rotary hammers, demolition hammers, impact tools, and percussion tools; electric saws, and blades for electric saws; drilling machines and accessories for drilling machines, namely, drill bits; machine tools for cutting and breaking; coring machines and coring bits for use with coring machines; drain augers, sewer augers, pipe cleaning machines; stands for machines; generators of electricity; {specify the type of power station “block type thermal” for example} power stations for power generation
CLASS 9: Electrical power supplies
CLASS 12: Carts for machines
MULTI-CLASS ADVISORY FOR INTENT TO USE APPLICATION BASED ON SECTION 1(B) / 44
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 Sections 1(b) and 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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
TO RESPOND TO THIS LETTER:
Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. For technical assistance with online forms, e-mail TEAS@uspto.gov or contact the Trademark Assistance Center at 1-800-786-9199.
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/.
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 been 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 TEAS with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
ADVISORY AS TO INFORMAL / TELEPHONE / EMAIL COMMUNICATIONS WITH THE EXAMINING ATTORNEY
Trademark applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board and their attorneys or agents are required to conduct their business with decorum and courtesy. See 37 C.F.R. §2.192. The examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail. See TMEP § 709.04.
HOWEVER, informal communications such as email and telephone may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal or requirement. The examining attorney advises the applicant to file a formal response for consideration of arguments regarding any substantive refusal or requirement. See TMEP §709.05. Also, USPTO employees, including examining attorneys cannot comment on the validity of registered marks (see TMEP §1801) or answer questions as to whether a particular mark or type of mark is eligible for registration (see TMEP §108.02).
Further, telephone or E-mail may not be used to file applications for registration of marks, responses to Office actions, pre- or post-publication amendments to an application, changes of correspondence address, appointments or revocations of attorneys, attorney withdrawal requests, petitions, documents required by statute to show use of a mark in commerce or to request an extension of time to show such use, and post-registration maintenance documents or proposed amendments. These documents may be filed electronically using TEAS. Responses to Office actions sent via e-mail will not be accorded a date of receipt. 37 C.F.R. §2.62(c).
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@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.