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: 3/1/2019

 

 

 

 

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Identification of Goods

The identification of goods is indefinite and must be clarified because some of the wording is too broad, and may be classified in more than one class. For example, “collars” is unclear, and may be classified in different classes. For example, “collars of metal for fastening pipes” is in class 6, while “pet collar accessories, namely, safety light” is classified in class 9. Applicant must clarify.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Machine parts, namely, bearings, roller bearings, ball bearings, bearing housings, bearing inserts, bearing units in the nature of bearings integrated with machine components, rope sheaves, being parts of machines, collars, pillow blocks, and flange units, including parts thereof, in class 7.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services.  See Nice Classification, 11th ed., version 2019 (Nice 11-2019).  Applications filed on or after January 1, 2019 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new version, the entire identification must comply with this version.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries.  See TMEP §1402.04.

 

Black/White/Gray Drawing with Description Referencing Black/White/Gray-Clarification Required

Applicant must clarify whether color is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)-(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  Applicant submitted a drawing of the mark in black, white, and/or gray with a description referencing these colors; however, applicant did not claim color as a feature of the mark, which creates an ambiguity as to whether the mark features color.  See 37 C.F.R. §2.52(b)-(b)(1); TMEP §807.07(f)(ii).  There are only two options for depicting a mark in a trademark application:  (1) a color drawing in which color is a feature of the mark, or (2) a black-and-white drawing in which color is not a feature of the mark.  See 37 C.F.R. §2.52(b)-(b)(1).

 

To clarify whether color is a feature of the mark, applicant may satisfy one of the following:

 

(1)       If the mark is not in color, applicant must submit the following statement:  “The mark is not in color.”  Amending the description to delete any reference to black, white, and/or gray is not necessary.  See TMEP §807.07(f)(ii).

 

(2)       If color is a feature of the mark, applicant must submit (a) a statement listing all the colors claimed as a feature of the mark and (b) an amended description of the literal and design elements in the mark that specifies where all the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  If some of the black, white, and/or gray appearing in the mark represent background, outlining, shading, and/or transparent areas, applicant must so specify in the description of the mark.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate: 

 

Color claim:  “The colors gray and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  of an outline of a turtle in grey with the letters "COC" inside the outline, to "C" on the top right represented backwardly. All of the wording is in black.

 

TMEP §807.07(f)(ii).

 

Significance of the Wording

To permit proper examination of the application, applicant must explain whether the wording in the mark “COC” has any significance in the field of machinery or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  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.

 

Telephone for Clarification Recommended

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. 

 

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).

 

 

/Inga Ervin/

Inga Ervin

Trademark Examining Attorney

Law Office 111

571-272-9379

571-273-9379(fax)

Inga.Ervin@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 3/1/2019 FOR U.S. APPLICATION SERIAL NO. 88210107

 

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 3/1/2019 (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.