To: | Smooth-On, Inc. (khickey@smooth-on.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88310864 - SMOOTH-ON - N/A |
Sent: | 5/3/2019 9:55:39 AM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88310864
MARK: SMOOTH-ON
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Smooth-On, 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: 5/3/2019
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).
SPECIMEN PARTIAL REFUSAL AS TO CLASSES 3 AND 16
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Classes 3 and 16. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimens submitted only showed the mark in connection to retail store services. In addition, while an image of the goods was shown on the point of sale webpage specimens, the images of the goods was too small and the resolution was not high quality enough to determine whether the mark appeared on the goods in the specimen. Thus, it did not appear as though the mark appears on the goods identified in Classes 3 and 16 of the application.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp. For additional information on specimens, please see video 8 at http://www.gov.uspto.report/trademarks-getting-started/process-overview/trademark-information-network.
IDENTIFICATION OF GOODS AND SERVICES PARTIAL REQUIREMENT AS TO CLASSES 1, 2, 16, 17, AND 41
Applicant may substitute the following wording, if accurate. The bold formatting represents new or edited wording, the bold italic formatting represents wording to be filled in by the applicant, and the strikethrough formatting represents wording to be deleted by the
applicant:
Class 1: flexible silicone, polysulfide, and urethane molding compounds for use in {specify industry or field of use, e.g., the manufacture of jewelry}; silicones, polysulfides, and urethanes for use in mold making processes in {specify industry or field of use}; flexible rubber compounds for use in the manufacture of architectural and structural molds and castings; flexible rubber compounds for use in the manufacture of molds and castings for industrial, commercial, special effects, theatrical, prosthetic, and artistic applications; flexible rubber molding compounds for the casting of a variety of articles, namely, articles made from concrete, gypsum, plaster, wax, metal alloys, resins, urethanes, epoxies, polyester and silicones for use in {specify industry or field of use}; unprocessed plastics in liquid form for use in {specify industry or field of use}; casting resins being {specify type of resin, e.g., unprocessed artificial resins, plastic} for general casting purposes; urethane casting resins for use in {specify industry or field of use}; epoxy casting compounds for use in {specify industry or field of use}; casting resins being {specify type of resin} used for industrial, commercial, and artistic applications; industrial adhesives for bonding and repair purposes; epoxy adhesives in the nature of glue for general bonding and repair purposes; release agents for use in molding and casting applications in {specify industry or field of use}; epoxy putty in the nature of glue for creating and repairing three dimensional objects; casting foam being {specify type} for use in sculptural, architectural, theatrical, padding, cushioning, and special effects applications; cure retardant compositions for silicone rubber products
Class 2: colorants, tints, and color pigments; metals in compound and powder form for producing metallic, glitter, iridescent and color effects in {specify field of use, e.g., painting, decorating, printing, and art}; fluorescent color pigments for rubbers, plastics, and rigid and flexible foams; coatings, namely, wax sealers used to seal and coat porous surfaces and urethane coatings to provide impact resistant surfaces
Class 3: special effects makeup; theatrical makeup; three-dimensional makeup for special effects; prosthetic makeup
Class 16: printed instructional teaching materials, manuals, catalogs, and publications being {specify type of publication, e.g., books} in the field of mold making, casting, and other applications for rubber molds and casting resins
Class 17: silicone, polysulfide, and urethane rubbers; flexible {further specify type, e.g., raw or semi-worked, bars, sheets, natural, crude, polysulfide} rubbers used in the manufacture of rubber molds and molded rubber articles, namely, articles for industrial, commercial, or artistic applications; flexible {further specify type} rubbers for use in the manufacture of architectural and structural molds; flexible {further specify type} rubbers used to create special effects, theatrical, prosthetic, and orthopedic and cushioning appliances; clear flexible {further specify type} rubber used for encapsulating and display applications; flexible plastics {further specify type, e.g., sheets, tubes} used for casting applications, namely, industrial, commercial, or artistic applications
Class 41: educational services, namely, providing classes and seminars in the fields of mold making, casting, and other applications for liquid
rubbers and resins; providing a website featuring blogs, technical support services, and other {specify “other” or delete indefinite wording}, and
instructional information in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing an online community forum for artisans and craftsman utilizing molding
rubbers and casting resins
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 REQUIREMENT
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 7 classes; however, applicant submitted a fee sufficient for only 6 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 1, 2, 17, and 41; and applicant needs a specimen for classes 3, 16, and 25. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(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 refusal and requirements 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 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.
/Shannon B. Keating/
Shannon B. Keating
Examining Attorney
Law Office 126
(571)270-3734
Shannon.Keating@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.