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: 3/16/2019

 

 

INTRODUCTION

 

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.

 

 

SEARCH OF OFFICE’S DATABASE OF 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 ISSUES

• Identification of Goods
• Multiple-Class Application Requirements

 

 

IDENTIFICATION OF GOODS

 

The wording, specified below, in the identification of goods is indefinite and must be clarified because it does not specify the type or nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Further, this wording could identify goods in more than one international class. 

 

Class 1

 

The wording “chemical plating solutions” is indefinite because it does not specify the nature of its plating (e.g., chromium plating, metal plating, etc.), and it also should use more specific language such as “chemical compositions” instead of “solutions”, as consistent with the ID Manual.

 

The wording “electroplating solutions” is indefinite, and applicant must specify the chemical chemical composition of the solutions (e.g., electrolytic acid copper solutions).

With respect to “additives,” applicant must specify they are “chemical additives,” and also the use of the additives (e.g., for use in accelerating hardening of concrete, or, alternatively, the materials, e.g., oils).

 

For “chromating agents,” applicant must specify the nature or type of agents (e.g., chromates, lead chromate, sodium chromate, etc.).

 

Also, with respect to “passivating agents,” applicant must further specify the type of agents (e.g., metallic oxides, etc.).

Class 2

 

The wording “coatings” is indefinite and must be further specified as to type of coating or the function of the coating (e.g., for automobile finishing, decorative spray coating, etc.).  Also, this wording is indefinite, because it could include goods in other classes (e.g., seed coating applied to corn in class 1; nail polish coatings in class 3, etc.).

 

Generally, with respect to applicant’s anti-corrosive goods, it must specify the type or nature of the goods acceptable in class 2 (e.g., coatings, etc.).

 

Also, with respect to “anti-corrosive compounds as additives to surface coatings” and “additives for use in coatings,” applicant must further specify the class 2 nature of these goods (e.g., anti-corrosive oils, anti-corrosive paints, etc.), because otherwise, chemical additives are generally in class 1.  Acceptable additives in class 2 are generally, e.g., textured additives for paint, etc.  Alternatively, applicant my re-classify the goods in another class with appropriate clarification, consistent with the ID Manual.

 

For applicant’s “conversion coatings” and “conversion coating compositions,” applicant must specify the class 2 nature of the goods (e.g., anti-corrosive coatings, primers for preparing surfaces to be painted, etc.).  Otherwise, conversion coating compositions may be broad as it may include chemicals in class 1 (e.g., chromates, etc.). Alternatively, applicant my re-classify the goods in another class with appropriate clarification, consistent with the ID Manual.

 

Applicant may adopt the following, if accurate:

 

Class 1:  Industrial chemicals; Chemicals for use in metal plating; Chemical plating solutions, namely, metal plating chemical compositions; Plating solutions, namely, metal plating chemical compositions; Electroplating solutions, namely, {specify, e.g., electrolytic acid copper solutions}; Electroplating chemical additives; Chemical additives for use in {indicate use, e.g., accelerating hardening of concrete, etc., or indicate material(s), e.g., oils, drilling muds, fuels, etc.}; Chemical additives for paints and surface coatings; Chemical additives for use in the production of coatings; Galvanizing preparations; Galvanising compositions, namely, galvanizing preparations; Chemical products, namely, chemicals for the manufacture of protective coatings; Chemical preparations for use in the manufacture of surface coatings; Chemicals for use in treating metal surfaces; Chemicals for preventing corrosion; Chemical preparations for facilitating the alloying of metals; Preservatives for metals; Electrolyte solutions, other than for medical use, namely, electrolytic acid copper solutions used for metal plating; Coating compositions, other than paint, namely, {specify, e.g., coatings used in the manufacture of printed circuit boards}; Coating agents, other than paint, namely, {specify, e.g., coatings used in the manufacture of printed circuit boards}; Chromating agents, namely, chromates; Passivating agents, namely, {specify agents, e.g., metallic oxides}

 

Class 2: Coatings in the nature of {indicate specific type, e.g., automobile finishing}; Corrosion resistant coatings; Coatings for use as primers; Coating materials for protection of surfaces exposed to galvanic corrosion; Preservative coatings for use against corrosion; Anti-corrosive preparations in the nature of a coating; Coating preparations for the treatment of metal surfaces to resist attack by corrosion; Anti-corrosive compounds as additives to surface coatings, namely, {specify IC 2 goods, e.g., anti-corrosive oils, anti-corrosive paints, anti-corrosive papers, etc.}; Additives for use in coatings, namely, {specify IC 2 goods, e.g., anti-corrosive oils, anti-corrosive paints, anti-corrosive papers, etc.}; Primers; Conversion coatings, namely, {specify IC 2 goods, e.g., anti-corrosive coatings, primers for preparing surfaces to be painted}; Conversion coating compositions, namely, {specify IC 2 goods, e.g., anti-corrosive coatings, primers for preparing surfaces to be painted}

 

Please note, if applicant includes additional classes in response to this requirement, applicant must also comply with the multiple-class application requirements provided herein.

 

Scope.  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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application potentially 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).  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.

 

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Communication. 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. 

 

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.  

 

 

 

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@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 3/16/2019 FOR U.S. APPLICATION SERIAL NO. 88233482

 

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 3/16/2019 (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.