Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 03, 2019

 

 

This New Non-Final Action is in response to the applicant’s communication filed on July 30, 2019, in response to the June 28, 2019, Office Action.  In the applicant’s response, applicant added International Class 42 and provided an amended identification of goods and services.  However, as further explained below, the identification of goods and services indefinite requirement is continued and maintained and applicant should note the new requirements for Classes 6, 35, and 40.  Furthermore, the foreign registration certificate required is also continued and maintained.

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services- Indefinite
• Foreign Registration Certificate Required

 

IDENTIFICATION OF GOODS & SERVICES-INDEFINITE

 

This requirement is continued and maintained and only applies to Classes 6, 35, and 40, Class 42 is acceptable as written.

 

The wording identified below in the identification of goods and/or services must be clarified because it is indefinite and does not describe the actual nature of the goods and/or services offered.  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 and/or services.  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.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 6: “Metal hardware, namely, dowel pins, circlips, self tapping inserts in the nature of {identify the specific nature of the self tapping pins, e.g., reinforcing pins of metal for formwork}, clips for general use, clamps, joints and couplings for {identify the specific nature of the joints and couplings, e.g., metal pipe couplings and joints}; screws of metal; nuts of metal; bolts of metal; fasteners of metal, namely, bolts and rivets; metal hardware, namely, screw, bolts, caps in the nature of sealing caps of metal; cups in the nature of metal suction cups; eyes in the nature of metal eye bolts, metal eye nuts, metal hoist rings in the nature of {identify the specific nature of the hoist rings, e.g., chain hoist used for lifting and rigging}; nuts {identify the specific nature of the nuts in Class 6, e.g., buts of metal}, rings in the nature of sealing rings, o-rings, retaining rings, namely, {identify the specific nature of the rings in Class 6, e.g., screw rings of metal}; rivets and tops in the nature of screw tops of metal for bottles, all of metal; metal screw nuts, metal threaded nuts, metal wing nuts, all of metal; eye bolts, metal expansion bolts, metal anchor bolts, metal U-bolts, metal fixing bolts, metal screw bolts, metal bolt snaps, all of metal; metal cables non-electric, metal cable wires and metal chains of metal; metal fasteners, namely, screw threaded fasteners, clevis fasteners, thumbscrew fasteners, snap ring screw fasteners, machine belt fasteners, blind bolt fasteners, all of metal; metal pulleys, springs and valves; belt stretchers of metal; couplings of metal for tubing, piping or chains; washers of metal for use with screws and bolts, pins, shafts, motors; spacers of metal in the nature of fastener spacers, shaft spacers, and bracket spacers, namely, {identify the specific nature of the spacers, e.g., metal spacer brackets}; pre-fabricated metal building assembly kits; valve assemblies of metal not being parts of machines; structural parts and fittings for the aforesaid goods”.

 

International Class 35: “Retail and online retail store services relating to metal hardware, tools, screws, nuts, bolts, fasteners, screw bolts, caps, covers, cups, eyes, nuts, rings, rivets and tops, screw nuts, threaded nuts, wing nuts, eye bolts, expansion bolts, anchor bolts, U-bolts, fixing bolts, screw bolts, bolt snaps, non-electric cables, wires and chains, screw threaded fasteners, box fasteners, clevis fasteners, thumbscrew fasteners, snap ring fasteners, machine belt fasteners, blind bolt fasteners, metal pulleys, springs and valves, belt stretchers, couplings for tubing, piping or chains, washers, spacers, pre-fabricated metal building assembly kits, valve assemblies of metal not being parts of machines, and structural parts and fittings for the aforesaid; retail and online retail store services relating to precision engineering tools in the nature of calipers, gauges, laser distance meters, measuring apparatus and tools, metrology apparatus and tools, hand-operated tools, wrenches, screwdrivers, machine tools, cutters and motors, gears, bearings, belts and pulleys for machines, and structural parts and fittings for the aforesaid”.

 

International Class 40: “Custom manufacture for others of metal hardware, namely, tools, screws, nuts, bolts, fasteners, screw bolts, caps, covers, cups, eyes, nuts, rings, rivets and tops, screw nuts, threaded nuts, wing nuts, eye bolts, expansion bolts, anchor bolts, U-bolts, fixing bolts, screw bolts, bolt snaps, non-electric cables, wires and chains, screw threaded fasteners, box fasteners, clevis fasteners, thumbscrew fasteners, snap ring fasteners, machine belt fasteners, blind bolt fasteners, metal pulleys, springs and valves, belt stretchers, couplings for tubing, piping or chains, washers, spacers, pre-fabricated metal building assembly kits, valve assemblies of metal not being parts of machines, and structural parts and fittings for the aforesaid; custom manufacture of precision engineering components in the nature of measuring apparatus and tools, metrology apparatus and tools, hand-operated tools, wrenches, screwdrivers, machine tools, cutters and motors, gears, bearings, belts and pulleys for machines, and structural parts and fittings for the aforesaid; assembly of products for others”.

 

While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed.  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.

 

FOREIGN REGISTRATION REQUIRED

 

This requirement is continued and maintained.

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this nonfinal Office action  

 

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.

 

/Carolyn Wlodarczyk/

Carolyn Wlodarczyk

Trademark Examining Attorney

Law Office 109

571-272-9273

carolyn.wlodarczyk@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 03, 2019 for

U.S. Trademark Application Serial No. 88383827

 

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. 

 

 

/Carolyn Wlodarczyk/

Carolyn Wlodarczyk

Trademark Examining Attorney

Law Office 109

571-272-9273

carolyn.wlodarczyk@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 03, 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.”