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: 3/19/2019

 

 

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.

 

 

            A.        No Conflicting Marks Found

 

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).

 

 

             B.       Identification of Goods/Services

 

• International Class 008: Hand tools, namely, wrenches, nut wrenches, pipe wrenches, screw wrenches, spark wrenches, torque wrenches, combination wrenches, combination and open-end wrenches, open-end wrenches, box end wrenches, flare nut wrenches, ratcheting flare nut wrenches, crowfoot wrenches, spanner wrenches, adjustable wrenches, flange jack wrenches, structural wrenches for construction, ratcheting box wrenches, manually operated openers for drum caps, socket wrenches, sockets, socket sets, metric socket sets, drive metric socket sets, impact and power socket sets, wrench sets, ratchet wrenches, ratchet handles, attachments for ratchet wrenches, namely, universal joints, socket nut drivers, ratchet wrench extensions, flat wrenches, stud removers, namely, a hand tool for loosening hard-to-turn studs and for removing broken studs, screwdrivers and screwdriver sets, nut drivers and nut driver sets, screwdriver sockets, screwdriver bits, bits for hand drills, screwdrivers, sockets, bit holders, namely, tools for holding bits for hand drills and bits for hand operated bit drivers, bits, namely, adaptors for interchange of sockets and attachments from one drive size to another for hand tools, flex handles, namely, tools for socket wrenches for allowing the drive head of hand tools to pivot back and forth on the handle to allow the handle to avoid obstructions when being turned in a cramped space, bull bars, namely, a heavy duty socket handle for removing bolts, sliding T drive, namely, a tool with a sliding drive head for allowing the drive head to slide back and forth on a tool to avoid obstructions when being turned in a cramped space, ball joint impact socket wrenches, torque screwdrivers, torque multipliers, replacement squares for use with torque multipliers, hex keys, hex keys wrenches, hex key wrench sets, pliers, snips, scissors, pliers sets, pipe pliers, tongue and groove pliers, cutting pliers, slip joint pliers, long nose pliers, hose clamp pliers, crimping irons, aviation snips, offset snips, metal cutting snips, wire cutters, c-clamp pliers, wrench plier vise grips, hammers, punches; chisels, cold chisels, cape chisels, round ne chisels, center punches, pilot punches, solid punches, starter punches, prick punches, pin punches, mallets, ripping hammers, sledgehammers, pry bars, crowbars, wrecking bars, rivet removers, nail pullers, carpenters' pincers, clamps, carpenter's clamps, metal vises, hand operated lifting flange jacks, scrapers, gasket scrapers, putty knives, razor scrapers, utility knives, screw extractors, saws, hand saws, namely, hack saws, replacement blades for hand saws and hack saws; magnetic hand tools for picking up magnetic objects, namely, fasteners; hand hooks, picks, ball drivers; socket wrenches and handles; tool pouches for attachment to tool belts; roll-up fabric container for hand tools; ratchets, sockets, and parts therefor; socket sets and wrench sets; sets of hand tools including wrenches, sockets, screw drivers, punches, chisels and files; Hand Tools, namely, sockets, socket drivers, wrenches, socket wrenches, ratchets, ratchet extensions and socket set boxes

 

The wording “INCLUDING” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services if accurate: See TMEP §1402.01

 

International Class 008: Hand tools, namely, wrenches, nut wrenches, pipe wrenches, screw wrenches, spark wrenches, torque wrenches, combination wrenches, combination and open-end wrenches, open-end wrenches, box end wrenches, flare nut wrenches, ratcheting flare nut wrenches, crowfoot wrenches, spanner wrenches, adjustable wrenches, flange jack wrenches, structural wrenches for construction, ratcheting box wrenches, manually operated openers for drum caps, socket wrenches, sockets, socket sets, metric socket sets, drive metric socket sets, impact and power socket sets, wrench sets, ratchet wrenches, ratchet handles, attachments for ratchet wrenches, namely, universal joints, socket nut drivers, ratchet wrench extensions, flat wrenches, stud removers, namely, a hand tool for loosening hard-to-turn studs and for removing broken studs, screwdrivers and screwdriver sets, nut drivers and nut driver sets, screwdriver sockets, screwdriver bits, bits for hand drills, screwdrivers, sockets, bit holders, namely, tools for holding bits for hand drills and bits for hand operated bit drivers, bits, namely, adaptors for interchange of sockets and attachments from one drive size to another for hand tools, flex handles, namely, tools for socket wrenches for allowing the drive head of hand tools to pivot back and forth on the handle to allow the handle to avoid obstructions when being turned in a cramped space, bull bars, namely, a heavy duty socket handle for removing bolts, sliding T drive, namely, a tool with a sliding drive head for allowing the drive head to slide back and forth on a tool to avoid obstructions when being turned in a cramped space, ball joint impact socket wrenches, torque screwdrivers, torque multipliers, replacement squares for use with torque multipliers, hex keys, hex keys wrenches, hex key wrench sets, pliers, snips, scissors, pliers sets, pipe pliers, tongue and groove pliers, cutting pliers, slip joint pliers, long nose pliers, hose clamp pliers, crimping irons, aviation snips, offset snips, metal cutting snips, wire cutters, c-clamp pliers, wrench plier vise grips, hammers, punches; chisels, cold chisels, cape chisels, round ne chisels, center punches, pilot punches, solid punches, starter punches, prick punches, pin punches, mallets, ripping hammers, sledgehammers, pry bars, crowbars, wrecking bars, rivet removers, nail pullers, carpenters' pincers, clamps, carpenter's clamps, metal vises, hand operated lifting flange jacks, scrapers, gasket scrapers, putty knives, razor scrapers, utility knives, screw extractors, saws, hand saws, namely, hack saws, replacement blades for hand saws and hack saws; magnetic hand tools for picking up magnetic objects, namely, fasteners; hand hooks, picks, ball drivers; socket wrenches and handles; tool pouches for attachment to tool belts; roll-up fabric container for hand tools; ratchets, sockets, and parts therefor {as hand tools}; socket sets and wrench sets; [as hand tools} sets of hand tools [namely} wrenches, sockets, screw drivers, punches, chisels and files; Hand Tools, namely, sockets, socket drivers, wrenches, socket wrenches, ratchets, ratchet extensions and socket set boxes

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.

 

 

          C.        Color mark no color claim or description

 

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not state whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

Applicant may respond to this requirement by satisfying one of the following:

 

(1)        If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing.  See TMEP §807.07(a)(i).  However, any other amendments to the drawing will not be accepted if they materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate:  The mark consists of a stylized letter "W" within a hexagon.

 

(2)        If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  The following color claim and description are suggested, if accurate: 

 

Color claim:  “The colors light blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  a stylized letter "W" within a hexagon in the color light blue.

 

See TMEP §807.07(b).

 

 

 

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.  

 

 

 

Rossman, William

/Rossman, William/

EXAMINING ATTORNEY

LAW OFFICE 109

PHONE: 571-272-9029

EMAIL: william.rossman@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 3/19/2019 FOR U.S. APPLICATION SERIAL NO. 88228657

 

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 3/19/2019 (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.