Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 16, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 7, 2019.

 

In a previous Office action dated June 11, 2019, the trademark examining attorney required applicant satisfy the following requirements:  pay an additional fee for not complying with TEAS Plus requirements and amend the identification of goods with definite wording.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Additional Fee for Loss of TEAS Plus Status
• Identification of Goods Requires Amendment

 

ADDITIONAL FEE FOR LOSS OF TEAS PLUS STATUS

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Specifically, applicant filed a TEAS Plus application that identified one or more goods from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding goods.

 

The additional fee is required even if applicant later provides definite, acceptable wording for its identification of goods.

 

Applicants must submit the additional processing fee of $125 per class of goods to move forward in the registration process. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

The wording used to describe portions of the applicant’s goods needs clarification because it is indefinite and the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As previously noted, applicant filed a TEAS Plus application that identified one or more goods from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding goods.

 

The following are examples of indefinite wording and improper entries in applicant’s identification of goods:

 

• The wording “all-terrain wheelchairs for Mechanical, Electrical, Hybrid, Autonomous and Robotic Crafts” is indefinite because applicant has failed to specify the particular use, e.g., use in the sand, use at the beach, etc. While “all-terrain wheelchairs” is acceptable wording and further specification is not required, if applicant does provide further specification, applicant must provide definite wording as to the particular use of the all-terrain wheelchairs.

 

• The wording “automotive conversion kits comprised of Parts and Accessories to make structural changes to an automobile” is indefinite because applicant has failed to identify specific parts and accessories/components of the kits.

 

• The wording “bicycle parts, namely, Parts and Accessories” is indefinite because applicant has failed to identify specific parts and accessories, e.g., brake shoes, sprockets, forks, drive trains, handle bar stems, chains, clips, cleats, straps, etc.

 

• The wording “Bicycle pedal accessories, namely, Parts and Accessories” is indefinite because applicant has failed to identify specific accessories, e.g. clips, cleats, straps, etc.

 

• The wording “flexible fuel tanks for Consumer and Industrial Goods” is indefinite because applicant has failed to specify particular vehicles intended for this fill-in-the-blank entry, e.g., boats, trucks, yachts, etc.

 

• The wording “Kayak equipment, namely, Consumer and Industrial Goods” is indefinite because applicant has failed to identify specific kayak equipment, e.g., paddles, reinforcing struts, water deflecting skirts, etc.

 

• The wording “Mirrors for vehicles, namely, Consumer and Industrial mirrors” is indefinite because applicant has failed to identify specific mirrors, e.g., rear view, vanity, etc. “Consumer and Industrial mirrors” is not definite because the nature of the goods is unclear.

 

• The wording “Van conversion kits comprised of Parts and Accessories to make structural changes to a van” is indefinite because applicant has failed to identify specific parts and accessories/components of the kits.

 

• The wording “Vehicle parts, namely, Consumer and Industrial mirrors” is indefinite because applicant has failed to identify specific mirrors, e.g., rear view, vanity, etc. “Consumer and Industrial mirrors” is not definite because the nature of the goods is unclear.

 

• The wording “Wheeled carrier carts for Mechanical, Electrical, Hybrid, Autonomous and Robotic Crafts and boards”  is indefinite because applicant has failed to identify specific sport boards for which this fill-in-the-blank entry is intended, e.g., wind-surfing, paddle, surf, etc.

 

Applicant must amend the aforementioned entries to provide clarification as to the nature of its goods, using relevant and appropriate wording for each fill-in-the-blank entry.

 

The applicant should note the following when amending the identifications.

 

• The applicant may use different wording of its own when amending the identifications of goods.  The applicant must follow the guidelines discussed herein to ensure specificity and accuracy.  Please note that while identifications of goods can be clarified or limited by amendment, it is impermissible to add to or broaden the scope of the services beyond those originally listed in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

• For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 16, 2020 for

U.S. Trademark Application Serial No. 88351377

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Matthew D. McClellan

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 16, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”