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: 5/29/2019

 

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

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

SUMMARY OF ISSUES that applicant must address:

• Identification of Goods – Amendment Required
• Particular Goods Exceed Scope of Foreign Registration

 

Identification of Goods – Amendment Required

 

The identification of goods is unacceptable because many of the goods are indefinite and require clarification and reclassification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant is strongly encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html, to assist with its response to the following issues.  Applicant must specify the common commercial or generic name for the goods and classify the goods in their proper International Class. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

 

Also, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Lastly, applicant should note that the examiner has moved some misclassified goods to other classes that already are covered in the application. Those instances have been highlighted below. Many other misclassifications are not reflected in new classes below, but are highlighted in the explanations. For example, while applicant may move “snowblowers” from Class 12 to Class 7, since Class 7 is already in the application, applicant may not simply move “motor oils” to Class 4 from Class 12 without paying the required fee for Class 4 or deleting another class and substituting Class 4 in its place.

 

The examiner has provided suggestions and explanations below for the wording that requires amendment. The suggested new wording is highlighted with bold underlining and the explanations are in bold.  Applicant may adopt the suggested wording if accurate.  If not accurate, applicant should use the suggestions as guidance. If applicant wishes to add another class, applicant must follow the guidelines below.

 

“Metal coupler balls [must clarify and reclassify to Class 12, e.g. “metal trailer hitch ball couplers”; see below]; Metal bolts; Metal chains for general use; Metal hinges; Metal tire studs; Metal keel rollers; Stainless steel "D" shackles; Metal hardware, namely, links and pins; Metal hooks; Metal nuts; Metal ferrules; Metal hardware, namely, contact pins; Metal hardware, namely, light brackets; Metal gaskets for [indicate specific use; note that “metal engine gaskets for vehicles” are in Class 7]; Headlight brackets, license plate brackets, spare tire supports [these goods are in Class 12 and require amendment, see below]; Metal dock cleats,” in International Class 6;

 

“Ignition coils for automotive engines; Engine muffler clamps, spark plug ignition wires, spark plug covers, carburetors, starters for engines; Air filters, gas filters, and oil injection filters for engines; Plows; Camshaft plugs for engines; Gas pumps for engines; Bilge pumps; Engine parts, namely, gas line valves, fan belts, drive belts [these goods are in Class 12 if for vehicles, if not, applicant must specify that the drive belts are “for machines” in Class 7], recoil starters, and pistons; Electric winches; Automotive engine mufflers; Electrical spark plug caps [moved from Class 9]; Snow blowers [moved from Class 12],” in International Class 7;

 

“Life jackets; Eye glasses; Batteries; Electronic speed controllers; Electric switches; Electric battery switches; Fuses; Calibration guides for measuring, namely, spark plug gap measuring tools, electrical current tools and internal combustion engine compression measuring tools; Speedometers; Electric kill switches; Vehicle flasher lighting control units; Capacitative discharge ignition boxes; Electrical spark plug caps [these goods are in Class 7, see above]; Two-way radios; Motorcycle helmets; Face shields for protective helmets and recreational vehicle helmets,” in International Class 9;

 

“Light bulbs; Headlight lenses and replacement lenses; Automotive rear lights, brake lights and decorative lights; Automotive dome lights and trailer lights,” in International Class 11;

 

“All-terrain vehicle and snowblowers [these goods are in Class 7; see above]; Parts and accessories specially adapted for snowmobiles, motorcycles and All-Terrain Vehicles (ATV), namely, fenders, chain adjusters, footrests, fork braces, trailer hitches, cargo tie downs [note that if these are not specially adapted for vehicles they would be in Class 6 if metal or 22 if nylon], battery holder straps, handlebar risers, nylon cargo tie-downs [note that if these are not specially adapted for vehicles they would be in Class 22], sleigh hitches, oars, ski bars, namely, metal bars placed underneath skis to protect them from rough ground surfaces and to give better control on the ice, batteries [not acceptable here, belongs in Class 9], kick stands, bollards [not acceptable here, belongs in either Class 6 if metal or 19 if concrete or non-metal, see ID Manual], drain plugs, fuel tank caps, spark plugs [not acceptable here, belongs in Class 9], nylon cabins [note that if these are not specially adapted for vehicles they would be in Class 22], vehicle brake and clutch cables, remote control cables [not acceptable here, belongs in Class 9], tire chains, speed controllers [not acceptable here, belongs in Class 9 and requires clarification, e.g. “electronic speed controllers”], throttle grips, switches, battery switches [not acceptable here, belongs in Class 9 and requires clarification, e.g. “electronic”], fuel lines, gas tank connectors, bungees [note that if these are not specially adapted for vehicles they would be in Class 22], seat cushions, chromed covers for motors, footrest covers, seat covers, driver backrests, wheel spacers, shifter lever extensions, luggage rack extensions, cargo nets, brakes, mud flaps, chain guards, handlebars, fitted and semi-fitted vehicle covers [note that many of the above, with the exception of the highlighted goods, are acceptable so long as they are “specially adapted” for vehicles; if not, many of the goods would need to be reclassified in their designated class based on their purpose or function, e.g. “seat cushions” not for vehicles would be in Class 20; see ID Manual for assistance]; Motor oils [these goods are in Class 4], Vehicle parts, namely, tire rims, trailer rims, gaskets [these goods are in Class 7 and require clarification, e.g. “engine gaskets for vehicles”; see ID Manual], horns, chromed levers, shifter levers, clutch and brake levers, shifter lever extensions, electrical fuel line terminals for use in making connections, rear lights, brake lights, decorative lights [these goods are in Class 11 even if vehicle parts], mirrors, chromed mirrors, hubs, windshields, bumpers, floor boards, sprockets, skid plates, motor mounts, thumb warmers, namely, small heater on hand accelerator, fender protectors, sparkplug covers [these goods are in Class 7], glass covers for speedometer and tachometer dials; Vehicle parts, namely, chain guards comprising a steel belt inside the motor to protect users against touching; Vehicle parts, namely, fork gaiters, radiator guards, exhaust shields, hand guards, foot guards, trailers, footrests, gas tanks, rewind starter spring, clutch springs, flat proof or bead sealers [these goods are indefinite and ambiguous and must be deleted or clarified with proper classification; see ID Manual], seats for snowmobiles, motorcycles and all-terrain vehicles; Mufflers [these goods are in Class 7]; Snowmobile parts, namely, skis [clarification is needed, as demonstrated]; Vehicle parts, namely, cable supports, caliper stabilizers, belt racks, vehicle mounted gas tank carriers, electric winch brackets, deck cleats, chain adjusters, chrome light visors backrests, suspension cross shafts, namely, axles on which wheels are fixed or turn; Vehicle parts, namely, accelerator cables, brake cables, choke control cables, snowmobile and ATV tracks, rear ATV trunks, deflectors, shock absorber kits, axles, slides, wear bars, ploughs, brake pads, luggage racks, canoe carriers, foot protectors, oars, recoil springs, suspension springs, idler wheels; Parts and accessories for trailers, namely, jacks [these goods are in Class 7 if power operated or Class 8 if hand operated], rims, tires, cushion protectors [indefinite and requires clarification and classification, e.g. fabric covers could be in Class 20, chemical protectors are in Class 1, etc.; see ID Manual], transom savers [these goods are indefinite and ambiguous and must be deleted or clarified with proper classification; see ID Manual], tie downs [note that if these are not specially adapted for vehicles they would be in Class 6 if metal or 22 if nylon], surfboard carriers, manual winches [these goods are in Class 8], and launch and load walk ramps [these goods are in Class 6 if metal or Class 20 if plastic, note that if the ramps are sold as an integral component of the trailers, that must be specified for Class 12; see ID Manual]; Metal trailer hitch ball couplers [moved from Class 6]; Metal vehicle tire studs [moved from Class 6]; Vehicle headlight brackets, license plate brackets, and spare tire supports [moved from Class 6]; Land vehicle parts, namely, drive belts [moved from Class 7 above],” in International Class 12;

 

“Plastic cargo nets; Unfitted vehicle covers; Unfitted cushion protectors [these goods are indefinite and require clarification and reclassification, e.g. “unfitted tarps for cushions” are in Class 22, and “unfitted cushion covers” and “unfitted coverings of plastic for cushions” are in Class 24; see ID Manual],” in International Class 22;

 

“Clothing and accessories, namely, boots, gloves, off-road gloves, handle mitts [these goods must be clarified and possibly reclassified, e.g. “car washing mitts” are in Class 21, “bath mitts” are in Class 24 and “baseball mitts” are in Class 28], masks, namely, [identify type of masks, e.g. “knit face masks,” note that protective masks are in Class 9, e.g. “divers’ masks”], mittens, pants, balaclavas and undergarments,” in International Class 25;

 

“Folding sleds; tow straps for moving or towing snowmobiles [these goods are indefinite and require clarification and reclassification, e.g. “nylon towing straps for moving or towing snowmobiles” are in Class 22]; Ski skins; Plastic skis, face masks for use in snowmobile racing [these goods are indefinite and require clarification and reclassification, e.g. “protective face masks for use in snowmobile racing” are in Class 9],” in International Class 28.

 

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).

 

The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html.  The Manual includes explanations and notices of classification policy.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1402.04.

 

Multiple Class Application Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 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 identifies goods and/or services that may be classified in more than 8 classes; however, applicant submitted a fee sufficient for only 8 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Particular Goods Exceed Scope of Foreign Registration

 

Particular wording in the U.S. application’s identification of goods has been found to exceed the scope of goods in the foreign registration upon which the U.S. application relies.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies a long list of goods covering eight (8) International Classes, namely, Classes 6, 7, 9, 11, 12, 22, 25 and 28. However, the foreign registration does not cover three of the goods in Class 9 and 25. Specifically, the following goods in the U.S. application are not covered in the foreign registration:

 

“Eye glasses,” in Class 9;

 

“Pants; Undergarments,” in International Class 25.

 

Thus, these goods in the U.S. application are not acceptable. While “eye glasses” and “undergarments” may not be amended to correspond with the goods in the foreign registration, applicant may amend “pants” to “sweatpants.”

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)        Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)        Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant has any questions, please email or telephone the examiner at the address or number provided below.

 

/Kevin M. Dinallo/

Examining Attorney

Law Office 107

kevin.dinallo@uspto.gov

571-272-9731

 

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 5/29/2019 FOR U.S. APPLICATION SERIAL NO. 88343218

 

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 5/29/2019 (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.