To: | Wakefield Canada Inc. (ip@fredlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88203998 - WAKEFIELD - 81900.2 |
Sent: | October 08, 2019 10:27:00 AM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88203998
Mark: WAKEFIELD
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Correspondence Address: |
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Applicant: Wakefield Canada Inc.
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Reference/Docket No. 81900.2
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: October 08, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is satisfied:
• Significance of the Mark
See TMEP §713.02.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Identification of Goods (Class 003)
See id. This requirement will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Please note, applicant submitted the amended identification of goods in class 003: Industrial cleaners and degreasers, other than for manufacturing processes; industrial cleaners and degreasers, used in manufacturing processes
However, the above bolded wording remains unacceptable. Specifically, applicant must further specify the nature of its cleaners and degreasers to clearly classify the goods for manufacturing processes in class 001 or for other than manufacturing processes in class 003.
Applicant may substitute the following wording, if accurate:
Class 001: Industrial degreasing preparations used in manufacturing processes for use on
{indicate type of surface or field of use}
Class 003: Industrial degreasers and all-purpose cleaners, other than for manufacturing
processes
Scope Advisory
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.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/tfrazier/
Tamara Frazier
Trademark Attorney
Law Office 116
(571) 272-8256
tamara.frazier@uspto.gov