To: | T-H Marine Supplies, Inc. (shall@bradley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88298140 - BOATING ESSENTIALS - 00T272301114 |
Sent: | 4/24/2019 3:00:59 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88298140
MARK: BOATING ESSENTIALS
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CORRESPONDENT ADDRESS: BRADLEY ARANT BOULT CUMMINGS LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: T-H Marine Supplies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/24/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
The following applies to international classes 006, 007, 008, 009, 011, 020, 022 and 028 only.
The identification of goods is indefinite and must be clarified because as currently claimed the goods are overly broad and vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The applicant must provide more detail regarding the claimed goods. Suggestions and explanations are incorporated into the identification proposed below. Applicant may adopt the following identification, if accurate:
International Class 006:
support bracket made of metal for attachment to a boat trailer to support a boat motor; metal hose clamps; metal shackles for lifting and rigging; metal {“safety spring hooks” is vague and must be claimed in more detail}; metal {“eye snap swivel” is vague and must be claimed e.g., Metal hardware, namely, double-end swivels}; metal eye straps; anchors
International Class 007:
winches; bilge pumps; live well pumps, namely, {must provide more detail, e.g., pneumatic pumps, electric pumps}; {“drain plugs” must provide more detail and classify the goods accordingly}; vehicle service equipment, namely, motor flusher kit {must provide more detail as the goods are vague, e.g., Automotive service equipment, namely, brake flushing machines}; Marine engines and parts and fittings thereof; Marine engine parts, namely, fuel primer bulbs
International Class 008:
Manually-operated jacks; Hand tools, namely, hand-operated pumps
International Class 009:
electric wire harness, connectors, and adapters for use with a boat trailer; signaling whistle; electrical wiring and electric connectors for {must indicate what the goods are used for}; electric switch in the nature of a kill switch; electrical switches; electrical sockets; battery terminal kits comprised of {must indicate what the kits are comprised of}; electronic components, namely, battery clips
International Class 011:
boating lights, namely, {must provide more detail, e.g., trailer lights for boats, running lights for boats}
International Class 020:
plastic clips {“for storing pole lights” is vague and must be claimed in more detail}; non-metal dock cleats
International Class 022:
Nylon tie down straps {must be nylon to be properly classified in class 022 as metal tie downs is properly classified in class 006}; winch straps, namely, {must provide more detail, e.g. Nylon straps for handling loads, Nylon towing straps, All-purpose nylon straps featuring hook and loop fasteners}; rope {must specify type, e.g. packing ropes, anchoring ropes, ropes for marine use}
International Class 028:
Paddles {must indicate specific type of paddles, e.g., surf paddles, skateboard paddles, paddles for use with surfboards}; fishing rod holders
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.
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 “BOATING” because it is not inherently distinctive. These unregistrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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 current case the term is merely descriptive of what the goods are used for, namely, the claimed goods are used while “Rowing or sailing in boats as a sport or form of recreation.” See the attached online dictionary definitions.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BOATING” 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.
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.
/DAVID I/
David I
Trademark Attorney
Law Office 114
571-270-1526
david.i@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.