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: 4/22/2019

 

 

 

 

 

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

 

 

OFFICE SEARCH

 

The trademark examining attorney’s search of the Office’s database of registered and pending marks has revealed no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

IDENTIFICATION OF GOODS

 

Applicant must clarify the wordings indicated below in the identification of goods because they are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  These wordings are indefinite because they do not make clear what the goods are.  Further, these wordings could identify goods in more than one international class.  For example, , urethane, liquid waterproofing membrane to maintain, restore and upgrade the performance of roof systems are in International Class 1 and Urethane coating for waterproofing protection on roof systems are in International Class 2. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 1:  Chemical preparations, namely, urethane coating for waterproofing protection on roof systems; chemical preparations, namely, urethane, liquid waterproofing membrane to maintain, restore and upgrade the performance of roof systems; chemical preparations, namely, urethane coating for waterproofing protection on roof systems and provide a white reflective surface; roof coating formed primarily of resin with oil and asphalt; acrylic roofing coatings; water-based, pure acrylic, self-curing latex polymer roof coating; liquid coating formed of elastomer for use on roofs, walls, and other building surfaces; solvent-based primer for use in roof systems; polymer/copolymer coating that can be applied to various materials on a wall, floor and ceiling and which coating functions as a gas barrier and enables water vapor to pass through the coating; polymer/copolymer coating that can be applied to various materials on a wall, floor and ceiling and which coating functions as an air barrier; elastomeric roof coatings, acrylic roof coatings; urethane roof coatings; metal roof flashing; detail metal flashing for use in roof systems; galvanized steel sheet with a laminate of flashing for use in roof systems; metal building products, namely, roof boots; metal roof drains; metal roof vents and breathers; metal roof clamps; metal building materials, namely, roof termination and anchor bars; SBS (styrene-butadiene-styrene rubber) modified base sheet for use as an underlayment layer in a built-up roof system; an asphalt coated, SBS (styrene-butadiene-styrene rubber); liquid rubber composition used to form a synthetic rubber roofing membrane; urethane sealants for waterproofing protection on roof systems; urethane sealants for waterproofing protection on roof systems and provide a white reflective surface; roofing membrane for use as the waterproofing and reinforcement layer; rubber modified roofing membrane for use as the waterproofing and reinforcement layer; roofing membrane formed of polyester reinforcing fabric reinforcement, rubber and asphalt; roofing coal tar pitch for use in waterproofing; polyester reinforcing fabric for use in roofing; polyester mat for use in roofing; roof coating formed primarily of asphalt with oil and resin; waterproofing asphalt based coating for roofing; non-aluminized reflective waterproofing asphalt based coating for roofing; coal tar impregnated fiberglass mats used in the construction of a coal tar built-up roof, not for use as load support surfaces; restoration coatings, namely, asphalt-based coatings to weatherproof, preserve and protect metal, modified bitumen and coal tar pitch roofs; roof coating for waterproofing formed of asphalt, refined coal tar pitch, aromatic solvents and thermoplastic polymers; urethane coating for waterproofing protection on roof systems sold as an integral part of roofing; urethane, liquid waterproofing membrane to maintain, restore and upgrade the performance of roof systems; urethane coating for waterproofing protection on roof systems and provide a white reflective surface sold as an integral part of roofing; modified bitumen reinforced sheet for roofing systems; modified bitumen reinforced sheet for weatherproofing roofing systems; modified bitumen sheet formed of a polymer mat impregnated with modified asphalt; modified bitumen sheet formed of a polymer mat impregnated with modified asphalt and a mineral top coating; modified bitumen sheet formed of a polyester mat impregnated with modified asphalt; modified bitumen sheet formed of a polyester mat impregnated with modified asphalt and a mineral top coating; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt and rubber; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt and rubber and a mineral top coating; modified fiberglass base sheet for use as an underlayment layer in a built-up roof system, not for use as load support surfaces; fiberglass mat impregnated with bitumen and rubber for use in roofing systems not for use as load support surfaces; single-ply synthetic rubber roofing membrane; uncured neoprene sheet used in construction of flashing, gutter lining, waterproofing; EPDM (ethylene propylene diene monomer rubber) membrane for use in roof systems; non-metal roof flashing; detail non-metal flashing for use in roof systems; roofing membrane; roofing membrane formed of reinforced polyester knit fabric coated with a polymer compound; non-metal pre-molded and sheet form non-reinforced boots, corner flashing for use in roof systems; vinyl formulated sheet having a ribbed texture for use in roof systems; thermoplastic roofing membrane; polyester reinforced thermoplastic roofing membrane; non-metal trim strips for use in roof systems; non-reinforced thermoplastic polyvinyl chloride based membrane for use in roof systems; PVC roof flashing; reinforced PVC membrane for use in roof systems; non-reinforced thermoplastic polyolefin membrane for use in roof systems; multilayer roof membrane formed of a thermoplastic polyolefin base; polyester-reinforced fabric center, and a thermoplastic polyolefin compounded top layer for use in roofing systems, building construction; thermoplastic polyolefin pressure-sensitive membrane for use in roof systems; non-metal roof drains; non-metal roof vents and breathers; and non-metal building materials, namely, roof termination and anchor bars; non-metal weather strips for buildings; non-metal building products, namely, asphalt roof coatings; bituminous roof coatings; non-metal roof coverings containing acrylic; rubberized asphalt-based roofing primers; roofing base sheets in the nature of roofing fabrics; roof membranes; building material, namely, plastic webbing material used to reinforce bituminous waterproofing sheets, non-metal building flashing; non-metallic roofing base sheets in the nature of roofing fabrics, roof membranes, building material, namely, plastic webbing material used to reinforce bituminous waterproofing sheets, non-metal building flashing, non-metallic roofing shingles, non-metallic roofing underlayment membrane, non-metal roofing material, namely, a cap sheet and a modified cap sheet with reinforcement material; coal tar impregnated fiberglass mats used in the construction of a coal tar built-up roof, for use as load supports surfaces;

 

Class 2:  Urethane coating for waterproofing protection on roof systems; urethane coating for waterproofing protection on roof systems and provide a white reflective surface; roof coating formed primarily of resin with oil and asphalt; acrylic roofing coatings; water-based, pure acrylic, self-curing latex polymer roof coating; liquid coating formed of elastomer for use on roofs, walls, and other building surfaces; solvent-based primer for use in roof systems; polymer/copolymer coating that can be applied to various materials on a wall, floor and ceiling and which coating functions as a gas barrier and enables water vapor to pass through the coating; polymer/copolymer coating that can be applied to various materials on a wall, floor and ceiling and which coating functions as an air barrier; elastomeric roof coatings, acrylic roof coatings; urethane roof coatings;

 

Class 6:  Metal roof flashing; detail metal flashing for use in roof systems; galvanized steel sheet with a laminate of flashing for use in roof systems; metal building products, namely, roof boots; metal roof drains; metal roof vents and breathers; metal roof clamps; metal building materials, namely, roof termination and anchor bars;

 

Class 17:  SBS (styrene-butadiene-styrene rubber) modified base sheet for use as an underlayment layer in a built-up roof system; an asphalt coated, SBS (styrene-butadiene-styrene rubber); liquid rubber composition used to form a synthetic rubber roofing membrane; urethane sealants for waterproofing protection on roof systems; urethane sealants for waterproofing protection on roof systems and provide a white reflective surface; uncured neoprene sheet used in construction of flashing, gutter lining, waterproofing;

 

Class 19:  Roofing membrane for use as the waterproofing and reinforcement layer; rubber modified roofing membrane for use as the waterproofing and reinforcement layer; roofing membrane formed of polyester reinforcing fabric reinforcement, rubber and asphalt; roofing coal tar pitch for use in waterproofing; polyester reinforcing fabric for use in roofing; polyester mat for use in roofing; roof coating formed primarily of asphalt with oil and resin; waterproofing asphalt based coating for roofing; non-aluminized reflective waterproofing asphalt based coating for roofing; coal tar impregnated fiberglass mats used in the construction of a coal tar built-up roof, not for use as load support surfaces; restoration coatings, namely, asphalt-based coatings to weatherproof, preserve and protect metal, modified bitumen and coal tar pitch roofs; roof coating for waterproofing formed of asphalt, refined coal tar pitch, aromatic solvents and thermoplastic polymers; urethane coating for waterproofing protection on roof systems sold as an integral part of roofing; urethane coating for waterproofing protection on roof systems and provide a white reflective surface sold as an integral part of roofing; modified bitumen reinforced sheet for roofing systems; modified bitumen reinforced sheet for weatherproofing roofing systems; modified bitumen sheet formed of a polymer mat impregnated with modified asphalt; modified bitumen sheet formed of a polymer mat impregnated with modified asphalt and a mineral top coating; modified bitumen sheet formed of a polyester mat impregnated with modified asphalt; modified bitumen sheet formed of a polyester mat impregnated with modified asphalt and a mineral top coating; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt and rubber; modified bitumen sheet formed of a fiberglass mat impregnated with modified asphalt and rubber and a mineral top coating; modified fiberglass base sheet for use as an underlayment layer in a built-up roof system, not for use as load support surfaces; fiberglass mat impregnated with bitumen and rubber for use in roofing systems not for use as load support surfaces; single-ply synthetic rubber roofing membrane; EPDM (ethylene propylene diene monomer rubber) membrane for use in roof systems; non-metal roof flashing; detail non-metal flashing for use in roof systems; roofing membrane; roofing membrane formed of reinforced polyester knit fabric coated with a polymer compound; non-metal pre-molded and sheet form non-reinforced boots, corner flashing for use in roof systems; vinyl formulated sheet having a ribbed texture for use in roof systems; thermoplastic roofing membrane; polyester reinforced thermoplastic roofing membrane; non-metal trim strips for use in roof systems; non-reinforced thermoplastic polyvinyl chloride based membrane for use in roof systems; PVC roof flashing; reinforced PVC membrane for use in roof systems; non-reinforced thermoplastic polyolefin membrane for use in roof systems; multilayer roof membrane formed of a thermoplastic polyolefin base; polyester-reinforced fabric center, and a thermoplastic polyolefin compounded top layer for use in roofing systems, building construction; thermoplastic polyolefin pressure-sensitive membrane for use in roof systems; non-metal roof drains; non-metal roof vents and breathers; and non-metal building materials, namely, roof termination and anchor bars; non-metal weather strips for buildings; non-metal building products, namely, asphalt roof coatings; bituminous roof coatings; non-metal roof coverings containing acrylic; rubberized asphalt-based roofing primers; roofing base sheets in the nature of roofing fabrics; roof membranes; building material, namely, plastic webbing material used to reinforce bituminous waterproofing sheets, non-metal building flashing; non-metallic roofing base sheets in the nature of roofing fabrics, roof membranes, building material, namely, plastic webbing material used to reinforce bituminous waterproofing sheets, non-metal building flashing, non-metallic roofing shingles, non-metallic roofing underlayment membrane, non-metal roofing material, namely, a cap sheet and a modified cap sheet with reinforcement material; coal tar impregnated fiberglass mats used in the construction of a coal tar built-up roof, for use as load supports surfaces;

 

(Suggested additions are underscored; suggested deletions are stricken.)

 

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.

 

If the application is amended to add one or more classes, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application was submitted with a filing fee for one class.

 

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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

RESPONSE GUIDELINES

 

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 issue 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. 

 

 

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

betty.chang@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 4/22/2019 FOR U.S. APPLICATION SERIAL NO. 88292559

 

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 4/22/2019 (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.