UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 4/10/2019

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On April 9, 2019, the trademark examining attorney and Shyla N. Jones, Esq., discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services
• Disclaimer – [2 Separate Partial Requirements]
• Mark Description

 

 

 

Requirements

 

 

Identification of Goods and Services

 

Portions of the identification of goods and services is indefinite and must be clarified because some of the entries are too broad and/or fail to state the common commercial name of the goods/services.  See TMEP §1402.01.  For example, in Class 02, applicant must indicate its type of composition; in Class 17, applicant must indicate the uses of its goods; in Class 19, applicant must clarify that its goods are non-metal to preclude goods that may be in Class 06; in Class 35, applicant must indicate the field of the services; and, in Class 41, the services are too broad and misclassified.

 

Further clarification is incorporated into the suggested identifications below.

 

Applicant may adopt the following identification, if accurate (note that items in brackets and strikethroughs reflect suggested deletions whereas suggested additions are represented in capital letters):

 

Int. Class 01:

 

Calcium compounds, namely, calcium sulfate

 

Int. Class 02:

 

Coating composition COMPRISED OF ______ {indicate type of composition, e.g., polymers, polystyrene, polyurethane, etc.} for wall texture; Spray powder for texturing walls and ceilings

 

Int. Class 06:

 

Metal screws; METAL CEILING BOARDS; METAL CEILING PANELS; METAL TAPE BEAD IN THE NATURE OF DRWALL CONER BEAD OF METAL

 

Int. Class 16:

 

Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction; printed educational and reference materials, namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards, and sound reducing gypsum boards

 

Int. Class 17:

 

Joint tape FOR ____ {specify use, e.g., wallboard, drywall, pipes}; joint compound FOR ____ {specify use, e.g., wallboard, drywall, pipes}

 

Int. Class 19:

 

NON-METAL ceiling boards; NON-METAL ceiling panels; [metal tape bead;] sheathing BOARD; cement board; concrete panels; grid marks as an integrated component of wallboard; gypsum panels; plaster

 

Int. Class 35:

 

Customer service in the field of information management, namely, providing information for responding to customer inquiries concerning tracking of orders, shipping information, and invoicing for customers via the Internet, ALL IN THE FIELD OF ______ {specify field, e.g., building construction products}; PROVIDING A WEBSITE FEATURING CONSUMER PRODUCT INFORMATON RELATING TO BUILDING MATERIALS

 

Int. Class 37:

 

Providing a website featuring INSTALLATION, MAINTENANCE AND REPAIR information in the field of building materials; providing building CONSTRUCTION information

 

Int. Class 41: [DELETE CLASS]

 

[Providing a website featuring information in the field of building materials; providing building information]

 

Int. Class 42:

 

Consulting in the field of building materials, NAMELY, TECHNOLOGICAL CONSULTATION IN THE FIELD OF SELECTING BUILDING CONSTRUCTION MATERIALS SUITABLE FOR THEIR INTENDED USES; physical testing, namely, testing of building materials for others

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

Disclaimer

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASSES 01, 02, 06, 16, 17 and 19 ONLY

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “GYPSUM” in the mark because it is not inherently distinctive.  This unregistrable term is, at best, merely descriptive of features of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

As noted in the partial refusal above, the term, “GYPSUM,” refers to, “a widely distributed mineral consisting of hydrous calcium sulfate that is used especially as a soil amendment and in making plaster of paris: drywall.”  See attached, Merriam-Webster Dictionary.  In turn, “drywall” refers to, “a board made of several plies of fiberboard, paper, or felt bonded to a hardened gypsum plaster core and used especially as wallboard.”  See attached, Merriam-Webster Dictionary.

 

Applicant’s calcium sulfate is gypsum, its coating composition and spray powder encompass such goods composed in whole or part of gypsum and to be used on gypsum, its screw goods encompass such goods for use with gypsum or drywall, its printed materials feature gypsum goods and wallboard and construction techniques relative to gypsum goods, its joint tape encompasses such goods for use with gypsum, its joint compound is comprised of gypsum or for use with gypsum, and, as noted above, applicant’s services identified as customer service services encompass order tracking, shipping information and invoicing relative to gypsum and/or drywall goods.  Consequently, the term “gypsum” in the mark merely describes features of applicant’s goods such that applicant must disclaim exclusive rights to the use of this term apart from the mark as shown.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “GYPSUM” for International Classes 01, 02, 06, 16, 17 and 19 apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

Disclaimer – Partial Requirement

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASSES 35, 41 and 42 ONLY (and class 37 if identification is amended to include this class)

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “NATIONAL GYPSUM” in the mark because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of features of the applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

In the instant case, applicant’s mark is comprised, in part, of the terms “NATIONAL GYPSUM”.  The term, “national,” refers to something, “of or relating to a nation.”  See attached, Merriam-Webster Dictionary.  This term has been held merely descriptive of services that are nationwide in scope.  TMEP §1209.03(o); see, e.g., In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (holding NATIONAL CHAMBER merely descriptive of nationwide online directory services featuring information regarding local and state chambers of commerce and business and regulatory data analysis services for nationally promoting the interests of businesspersons or industry); In re Nat’l Rent A Fence, Inc., 220 USPQ 479, 479-80 (TTAB 1983) (holding NATIONAL RENT A FENCE merely descriptive of nationwide fence rental services); Nat’l Fid. Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691, 694 (TTAB 1978) (holding NATIONAL INSURANCE TRUST merely descriptive of nationwide services of handling administrative matters in locating suitable insurance coverage for attorneys and other groups).

 

The term, “GYPSUM,” refers to, “a widely distributed mineral consisting of hydrous calcium sulfate that is used especially as a soil amendment and in making plaster of paris: drywall.”  See attached, Merriam-Webster Dictionary.  In turn, “drywall” refers to, “a board made of several plies of fiberboard, paper, or felt bonded to a hardened gypsum plaster core and used especially as wallboard.”  See attached, Merriam-Webster Dictionary. 

 

Applicant’s services are, “customer service in the field of information management, namely, providing information for responding to customer inquiries concerning tracking of orders, shipping information, and invoicing for customers via the Internet; providing a website featuring information in the field of building materials; providing building information; consulting in the field of building materials; physical testing, namely, testing of building materials for others.”  They are services that may be provided nationwide or on a national basis such that the term “national” merely describes the scope of services. 

 

Further, applicant’s services identified as customer service services encompass order tracking, shipping information and invoicing relative to gypsum and/or drywall goods.  Similarly, applicant’s information services relative to building and building materials and consulting and testing services relative to building materials, all encompass such services relative to gypsum and/or drywall goods.  Consequently, the proposed wording, “NATIONAL GYPSUM,” merely describes applicant’s services as being in the field of gypsum and/or drywall and being provided nationally.  Therefore, applicant must disclaim exclusive rights to the use of the wording “NATIONAL GYPSUM” apart from the mark as show relative to International Classes 35, 37 and 42 (assuming applicant deletes Class 41 and adopts Class 37).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “NATIONAL GYPSUM” for International Classes 35, 37 and 42 apart from the mark as shown. 

 

SINGLE DISCLAIMER RESPONSE FORMAT: applicant may respond to both disclaimer requirements by combining the required disclaimers into a single statement as follows:

 

            No claim is made to the exclusive right to use “GYPSUM” for International Classes 01, 02, 06, 16, 17 and 19 and “NATIONAL GYPSUM” as to International Classes 35, 37 and 42 apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

 

§2(f) Suggested - Based on Five Years’ Use – As to Disclaimer for International Classes 035, 37 and 42

 

As was discussed with applicant’s counsel, the application record indicates that applicant has used the wording “NATIONAL GYPSUM” in its mark for a long time; therefore, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) with respect to the services in Classes 35, 41 and 42 (and class 37 if identification is amended to include this class) [NOTE: if applicant amends the identification to delete Class 41 and replace it with Class 37; then the 2(f) claim would only need to be stated as to Classes 35, 37 and 42 as suggested in the heading above].  See 15 U.S.C. §1052(f); TMEP §1212.05.

 

To amend the application to Section 2(f) based on five years’ use (in part as to Classes 35, 37 and 41), applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:

 

The wording “NATIONAL GYPSUM” in the mark has become distinctive of the services in International Classes 35, 37 and 41 through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

Disclaimer – Advisory

 

Applicant is advised that, if the application is amended to provide a claim of registration as to the wording “NATIONAL GYPSUM” under Trademark Act Section 2(f) as to the service classes in the application, applicant will be required to disclaim “GYPSUM” because such wording appears to be highly descriptive or generic in the context of applicant’s goods and services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

In such case, should simply provide the following disclaimer statement as to the entire application:

 

No claim is made to the exclusive right to use “GYPSUM” apart from the mark as shown. 

 

 

 

Mark Description

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the stylized word “NATIONAL” followed by a large parallelogram design, a medium parallelogram design, and, a small parallelogram design, above the stylized word “GYPSUM”.

 

 

 

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.  

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Paul C. Crowley/

Trademark Examining Attorney

Law Office 119

(571) 272-8846

paul.crowley@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 4/10/2019 FOR U.S. APPLICATION SERIAL NO. 88275381

 

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 4/10/2019 (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.