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:  September 16, 2019

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 14, 2019.

 

In a previous Office action dated June 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1 and 45 Refusal for an unacceptable specimen.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and mark description.

 

Based on further review, the trademark examining attorney notes that the following refusal has been withdrawn:  Trademark Act Sections 1 and 45 Refusal.  See TMEP §§713.02, 714.04.  The mark description requirement has been withdrawn.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal 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:

• PARTIAL IDENTIFICATION OF GOODS REQUIREMENT
• PARTIAL ABANDONMENT ADVISORY

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The wording “apparatus for water supply and heating for pools and spas” and “pool, spa and outdoor lighting” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The identification for “kits” in International Class 011 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

IC 011:  Apparatus for lighting, heating and water supply in the nature of lighting installations, water filtering apparatus, and heating installations; apparatus for underwater and outdoor lighting in the nature of lighting installations and pool and spa lights; apparatus for water, namely, {indicate the common commercial name of goods, e.g., hot water tanks, whirlpool jets}; apparatus for heating pools and spas in the nature of {indicate the common commercial name of goods, e.g., hot water tanks, whirlpool jets} featuring water returns, eyeballs, water jets, jets and eyeballs for pools and spas in the nature of bubblers, down jets, returns, eyeballs, pool jets, spa jets, suctions, aerators; apparatus for lighting, namely, electric lamps, lighting fixtures and lighting installations; lighting fixtures and lighting installations, fitted with led light sources; pool, spa and outdoor lighting, featuring related components and accessories in the nature of pool and spa fittings, namely, {applicant must indicate the common commercial name of definite and related goods, e.g., lighting fixtures}, pool plumbing spare parts, namely, {applicant must indicate the common commercial name of definite and related goods, e.g., pool skimmer diverter}; mounting kits and transformers comprised primarily of {applicant must identify the definite goods included in these kits, beginning with the Class 011 goods} (see TMEP section 1401.05); parts of the aforesaid goods

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final requirements apply will be deleted from the application by Examiner’s Amendment:  “apparatus for water supply and heating for pools and spas in the nature of water returns, eyeballs, water jets, jets and eyeballs for pools and spas in the nature of bubblers, down jets, returns, eyeballs, pool jets, spa jets, suctions, aerators” and “pool, spa and outdoor lighting, featuring related components and accessories in the nature of pool and spa fittings, pool plumbing spare parts, mounting kits and transformers” parts of the aforesaid goods.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only: 

 

IC 011:  Apparatus for lighting, heating and water supply in the nature of lighting installations, water filtering apparatus, and heating installations; apparatus for underwater and outdoor lighting in the nature of lighting installations and pool and spa lights; apparatus for lighting, namely, electric lamps, lighting fixtures and lighting installations; lighting fixtures and lighting installations, fitted with led light sources; parts of the aforesaid goods 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

Radcliff, Brent

/Brent M. Radcliff/

Examining Attorney

Trademark Law Office 123

(571) 270-0855

brent.radcliff@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 September 16, 2019 for

U.S. Trademark Application Serial No. 88376080

 

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. 

 

 

Radcliff, Brent

/Brent M. Radcliff/

Examining Attorney

Trademark Law Office 123

(571) 270-0855

brent.radcliff@uspto.gov

 

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 September 16, 2019, 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.”