To: | Geveko Markings Denmark A/S (karen.gaunt@dinsmore.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88340041 - CHIPFILL - N/A |
Sent: | 5/24/2019 8:54:46 AM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88340041
MARK: CHIPFILL
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Geveko Markings Denmark A/S
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 5/24/2019
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).
IDENTIFICATION OF GOODS - PARTICULAR WORDING TOO BROAD
The wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. See below for each individual class.
The suggested identification below contains further guidance in bold. Applicant may adopt any or all of the suggestions in bold so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the U.S. Acceptable Identification of Goods and Services Manual.
001
For 001, applicant must specify “unprocessed plastic.” Extruded plastic for use in manufacturing is listed in International Class 017.
Applicant may amend to adopt the following if accurate:
“Unprocessed plastics; unprocessed plastic in the form of masses; unprocessed plastic in the form of flakes; unprocessed thermoplastic compounds for use in manufacturing.” 001
“Extruded plastic in the form of masses for use in manufacturing; extruded plastic in the form of flakes for use in manufacturing; thermoplastic compounds in_____(specify form, e.g., bars, blocks, pellets, rods, sheets, tubes, etc.) form for use in manufacturing.” 017
017
For International Class 017, applicant must specify the plastics to be “in further manufacture for general industrial use.” Applicant must also specify the nature of use of the seals and sealants and the fillers. Applicant must specify the nature of the composite materials. For example, plastic composite materials. For the recycled plastics, applicant must specify the form and that they are to be used in further manufacturing.
Applicant may amend to adopt the following if accurate:
“Automobile cooling system leak sealants.” 001
“Fillers and adhesive preparations used by decorators.” 001
“Filler primers for automobile body repair.” 002
“Paint sealant for exterior surfaces of vehicle.” 002
“Polymer sealant for cleaning, shining and protecting automobile exterior surfaces.” 003
“Sealants made of aluminum for use in packaging and sealing machines.” 006
“Plastic in extruded form for use in manufacture; plastics in the form of sheets, films, blocks, rods and tubes in further manufacture for general industrial use; seals and sealants for____(specify use, e.g. “for buildings,” “adhesive sealants for general use,” “for pavement joints,” etc.) and fillers for____(specify use, e.g. “for expansion joints,”; synthetic and _____(specify nature of goods, e.g. plastic) composite materials; plastic seals for____(specify use, e.g. “for buildings,” “adhesive sealants for general use,” “for pavement joints,” etc.); recycled plastics in the form of____(specify, e.g., bars, blocks, pellets, rods, sheets, tubes, etc.) for use in further manufacturing; plastics stuffing material.” 017
“Cement fillers for use in roofing.” 019
019
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant must specify the common commercial names of the goods within 019.
Applicant may amend to adopt the following if accurate:
“Building and construction materials and elements, not of metal, namely,_____(specify common commercial name of goods within 019, e.g. “flooring materials,” “piles,” “xylolith,” “railings,” etc.); building materials of plastic materials namely,_____(specify common commercial name of goods within 019, e.g. “pipe supports,” “pedestals for elevating pavers,” “webbing material used to reinforce bituminous waterproofing sheets,” etc.); material for making and coating roads, road coating materials, namely,______(specify common commercial name of goods within 019, e.g. “road asphalt,” “polymeric bitumen emulsions,” etc.); non-metallic road repair materials, namely,______(specify common commercial name of goods within 019, e.g. “geotextiles,” “road asphalt,” “polymeric bitumen emulsions,” etc.).” 019
037
The identification of services in International Class 037 is acceptable.
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).
REQUIREMENTS FOR A COMBINED APPLICATION
The application identifies goods 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). The application identifies goods that are classified in at least six classes; however, applicant submitted a fees sufficient for only two classes. 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.
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.
/Gretta Yao/
Attorney
United States Patent & Trademark Office
Law Office 118
571.272.9313
gretta.yao@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.