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: 5/28/2019

 

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.

 

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).

 

SUMMARY OF ISSUES:

• Disclaimer Required
• Amendment to Identification of Goods and/or Services Required
• Multi-Class Application Requirements

 

Disclaimer Required

 

Applicant must provide a disclaimer of the unregistrable part(s) 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 DECK because it is not inherently distinctive.  These unregistrable term(s) at best are 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). 

 

Applicant identifies docks and docking related goods. As such, the wording DOCK is merely descriptive of applicant’s goods.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “DOCK” 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. 

 

Amendment to Identification of Goods and/or Services Required

 

Applicant must clarify the following indicated language for reasons stated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, rings and ring swivels, shackles, pins, rope guides, sheaves, tracks, screws, bolts and mountings” is indefinite and must be clarified because the nature of the goods are unclear. Applicant must indicate the common commercial name of the goods.

 

The wording, “wire rope fittings of metal, namely, trellis fixings” is indefinite and must be clarified because it is unclear as to what the goods is. Applicant must indicate the common commercial name of the goods.

 

The wording, “galvanised marine hardware” is indefinite because the nature of the good is unclear.

 

The wording, “deck fillers” is indefinite and overly broad because it could identify goods in multiple classes. Applicant must indicate the common commercial name of the goods.

 

The wording, “Bollards” is indefinite and overly broad and must be clarified because the nature of the goods is unclear and could identify goods in multiple classes.

 

The wording, “Hinges” is indefinite and overly broad and must be clarified because the nature of the goods is unclear and could identify goods in multiple classes.

 

The wording, “chain” is indefinite and overly broad and must be clarified because the nature of the good is unclear and could identify goods in multiple classes.

 

The wording, “shackles” is indefinite and must be clarified because the nature of the goods is unclear.

 

The wording, “rigging screws” is indefinite and overly broad because the nature of the goods is unclear and could identify goods in multiple classes.

 

The wording, “nuts, bolts and washers” is indefinite and overly broad because the nature of the goods is unclear and could identify goods in multiple classes.

 

The wording, “sailing blocks, thru-hulls, flanged ball-valves and hose clamps, for marine boating applications” is indefinite and must be clarified because the nature of the goods is unclear.

 

The wording, “Molds of Metal for Exothermic Reaction Welding, Exothermic powdered metal weld mix, and molds of metal for exothermic reaction welding using molten metal” is indefinite and must be clarified because it is unclear as to what each individual good is. Applicant must indicate the common commercial name of the good.

 

The wording, “Stainless steel and galvanised marine hardware” is indefinite and must be clarified because the nature of the good is unclear and it does not specify the specific piece of hardware.

 

The wording, “corrosion-resistant metal and its alloy as overlays and sheets is indefinite and must be clarified because the nature of the good is unclear.

 

The wording, “solder” is indefinite and must be clarified because the nature of the good is unclear.

 

The wording, “Floating docks of metal” is indefinite and must be clarified because the purpose of the good is unclear.

 

The wording, “plates of common metal” is indefinite and must be clarified because the nature of the good is unclear.

 

The wording, “metal gangways” is indefinite and must be clarified because the nature of the goods is unclear. Applicant must use the common commercial name of the identified goods.

 

The wording, “metal ramps” is indefinite and must be clarified because the purpose of the good is unclear.

 

The wording, “Dock bumpers not made of metal” is indefinite and overly broad and must be clarified because the nature of the good is unclear and could identify goods in multiple classes.

 

Applicant may substitute the following wording, if accurate:

 

Class 6:

 

Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, ring-shaped fittings of metal rings and ring double-end swivels, shackles for lifting and rigging, reinforcing pins of metal for formwork, rope guides, sheaves being parts of machines, for boats and sailing boats, tracks, screws, bolts and mountings brackets for general use; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal clip for wire; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings in the nature of indicate {specific types of fittings, e.g., sockets, threaded studs, buttons, etc}; metal stanchions, Stainless steel and galvanized steel marine hardware namely, {specify the specific hardware e.g. metal screws}; anchors; deck fillers in the nature of metal plugs; metal bollards; Metal hinges; steel chain; metal shackles for lifting and rigging; metal rigging screws; metal nuts; metal bolts;  metal washers; metal marine hardware, namely, thimbles; Hardware, namely, metal brackets for general use; Marine anchors; Metal building materials, namely, soffits; Metal hardware for use in descending ropes, namely, descenders; Metal hardware, namely, washers; chain blocks for lifting and rigging; Metal slings for loading; Ring-shaped fittings of metal; Metals, metal rods, metal compounds and alloys for use in the production of metal by exothermic reaction and in the process of welding metals; Molds of Metal for Exothermic Reaction Welding; Exothermic powdered metal weld mix in the nature of common metal powders used in manufacturing; molds of metal for exothermic reaction welding using molten metal; corrosion-resistant metal and its alloy as overlays and sheets overlays for fittings, steel plates, flanges, piping components; welding apparatus, namely, crucibles of common metal and their alloys; metallic molds for metal casting; hard solder; metal roof flashing, flashing of metal for building; Floating docks of metal, for mooring boats; metal bars; metal beams and metal beams for supporting ships when docking; identity plates of common metal; metal gangways; in the nature of metal ramps for use with boats; metal ramps for use with boats

 

Class 17:

 

Dock bumpers not made of metal in the nature of dock bumpers of rubber

 

 

Class 19:

 

Non-metal mooring bollards; Dock bumpers not made of metal in the nature of marine products, namely, bumpers for pilings or dock posts

 

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).

 

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.

 

Multi-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 Sections 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Guidelines

 

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.  

 

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(s) and/or requirement(s) 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. 

 

 

 

/Grace Duffin/

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/28/2019 FOR U.S. APPLICATION SERIAL NO. 88352569

 

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 5/28/2019 (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.