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: 5/9/2019

 

 

 

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.

 

 

SUMMARY OF ISSUES:

• Identification of Goods Indefinite
• Transliteration and Translation Required

 

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).

 

IDENTIFICATION OF GOODS

 

The classification and identification of goods stated in the application is unacceptable.  Some of the items need further clarification in order to properly classify the goods, some items are misclassified, and other items must be clarified to clearly indicate the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The application identifies the goods as follows [the unacceptable wording is bolded]:

 

Int. class 1; odor treatment equipment, namely, de-odorizing chemicals;

 

Int. class 2; multicomponent synthetic resin; synthetic resin adhesives; resins; epoxies;

Int. class 7; electrostatic finishing equipment and other paint application equipment, namely, electrostatic coating apparatus and parts thereof and attachments and accessories for use therewith; namely, spray coating apparatus, electrostatic paint spray guns, painting and coating machinery and equipment, namely, painting robot, reciprocator for use with painting robot or paint guns; paint pumps; color changes valves; compressed air guns for the extrusion of mastics; electric glue guns, coating materials, namely, electrostatic paints;

Int. class 9; high voltage supply units, electrical controls for electrostatic coating apparatus, high voltage electrodes for spray coating systems and electrostatic atomizing apparatus, industrial installation for static electricity; photo sensors, high-voltage cables; low-voltage cables, pulse generators; electrical equipment, namely, controllers;

Int. class 11; odor treatment equipment, namely, exhaust fans.

As to the “odor treatment equipment, namely, de-odorizing chemicals”, the applicant must clarify the goods to clearly indicate their nature and purpose.  If the goods are “chemical preparations for preventing growth of organisms” proper classification is in int. class 1; however if the goods are air deodorizing preparations or deodorizing cleaning preparations, then proper classification is in int. class 5.

 

The entire identification in int. class 2 “multicomponent synthetic resin; synthetic resin adhesives; resins; epoxies” must be clarified.  The “multicomponent synthetic resin” must be clarified to indicate if it is “unprocessed” in int. class 1 or semi-processed in int. class 17.  The “synthetic resin adhesives” are misclassified [proper classification is int. class 1] and furthermore the wording must be clarified to indicate their purpose, i.e. “for industrial purposes”.  The “resins” and “epoxies” must be clarified to clearly indicate nature, and could be classified in different classes depending upon their nature. 

 

As to the identification in int. class 7, the “color changes valves” must be clarified to clearly indicate they are for paint machines.  The “coating materials, namely, electrostatic paints” are misclassified; these paints are properly classified in int. class 2.

 

Lastly, in the class 9 identification, the “industrial installation for static electricity” wording must be clarified to clearly indicate the nature of the goods in order for proper classification to be made.  Further, the “pulse generators” must be amended to indicate their purpose, i.e. for testing electric current [in class 9].

 

The applicant may adopt one or more of the following, if accurate [suggestions are bolded]:

 

Int. class 1; odor treatment equipment, namely, de-odorizing chemical preparations for preventing growth of organisms; unprocessed synthetic resins; synthetic resin adhesives for industrial purposes;

 

Int. class 2; raw natural resins; epoxies, namely epoxy coating for use on concrete industrial floors; coating materials, namely, electrostatic paints;

 

Int. class 5; de-odorizing chemicals, namely deodorizing cleaning preparations;

Int. class 7; electrostatic finishing equipment and other paint application equipment, namely, electrostatic coating apparatus and parts thereof and attachments and accessories for use therewith; namely, spray coating apparatus, electrostatic paint spray guns, painting and coating machinery and equipment, namely, painting robot, reciprocator for use with painting robot or paint guns; paint pumps; color changes valves for paint machines; compressed air guns for the extrusion of mastics; electric glue guns;

Int. class 9; high voltage supply units, electrical controls for electrostatic coating apparatus, high voltage electrodes for spray coating systems and electrostatic atomizing apparatus; photo sensors, high-voltage cables; low-voltage cables, pulse generators for testing electric current; electrical equipment, namely, controllers;

Int. class 11; odor treatment equipment, namely, exhaust fans;

Int. class 17; Semi-processed synthetic resin.

The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions. Given the extremely indefinite nature of some of the goods in part and given that the application is based on intent to use, the examiner is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action.  It is the applicant's duty and prerogative to identify the goods and services.  TMEP section 1402.01(d).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

MULTIPLE 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 Section 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 7 classes; however, applicant submitted a fee(s) sufficient for only 5 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

FEES

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

TRANSLITERATION & TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit a transliteration (a phonetic spelling of the pronunciation, in Latin characters) of any non-Latin characters in the mark, with either an English translation of the corresponding non-English transliterated wording or a statement that the transliterated term has no meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §809. 

 

If the transliterated wording has an English translation, applicant should use the following format, if accurate: 

 

The non-Latin characters in the mark transliterate to “_______” and this means “_______” in English. 

 

TMEP §809.03. 

 

If the transliterated wording does not have an English translation, applicant should use the following format, if accurate: 

 

The non-Latin characters in the mark transliterate to “_______” and this has no meaning in a foreign language. 

 

Id. 

 

 

 

RESPONSE GUIDELINES

 

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. 

 

 

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.  

 

 

 

/Caitlin Watts-FitzGerald/

Trademark Examining Attorney

Law Office 111

571-272-9015

caitlin.watts-fitzgerald@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 5/9/2019 FOR U.S. APPLICATION SERIAL NO. 88385440

 

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 5/9/2019 (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.