To: | Walter Surface Technologies Inc. (tm@sternekessler.com) |
Subject: | U.S. Trademark Application Serial No. 88382947 - ALLSTEEL - 3167.0180000 |
Sent: | February 14, 2020 08:32:16 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88382947
Mark: ALLSTEEL
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Correspondence Address: |
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Applicant: Walter Surface Technologies Inc.
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Reference/Docket No. 3167.0180000
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: February 14, 2020
Applicant’s response of December 23, 2019. Additionally, the application has been divided pursuant to the applicant’s December 13, 2019 request to divide.
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Refusal(s) and/or requirement(s) maintained and continued.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• The section 2(e)(1) refusal
• The identification of goods issue (amending identification to avoid deceptiveness)
The applicant’s arguments as to descriptiveness are currently unpersuasive as the mark is seen to be descriptive and not suggestive of the goods. Applicant’s referenced ALL- formative marks combine differing elements and create different overall commercial impressions from the mark at issue. Attached in further support of the refusal are three third-party ALLSTEEL marks registered on the Principal Register under section 2(f), evidencing the descriptiveness of the marks.
Additonally, the identification of goods (amending identification to avoid deceptiveness is presently maintained). Applicant’s contention that the goods are not substantially made of steel in noted, however, since goods of the kind may be made in whole or in part of steel, the goods as identified may be potentially deceptive.
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/John S. Yard/
John S. Yard
Examining Attorney
Law Office 115
(571)272-9486
john.yard@uspto.gov