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: 7/3/2019

 

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).

 

The examining attorney respectfully advises applicant that this Office Action contains the following requirement(s) summarized immediately below and further explained within the body of this Office Action.

 

 

 

SUMMARY OF ISSUES that applicant must address:

 

• IDENTIFICATION OF GOODS -- the requirement to revise the identification of goods

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified because it lacks specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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 USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

 

 

Applicant may adopt the following wording, if accurate: 

 

 

 

Class 6:           Stainless tubing in the nature of stainless steel tubes (;)  pipe, namely, {applicant must specify the goods contemplated, for example, metal pipes} (;) metal fittings, namely, {applicant must specify the goods contemplated, for example, fittings of metal for pipes, or for example, weld fittings for {applicant must specify the use, for example, metal hose fittings}, clamp fittings for {applicant must specify the use}, I-Line fittings for {applicant must specify the use}, bevel seat fittings for {applicant must specify the use}, John Perry fittings for {applicant must specify the use}, Q-Line fittings for {applicant must specify the use}, and pipe size fittings for {applicant must specify the use}} (;) valves of all types, namely, {applicant must specify the valves & functions contemplated, for example, manually operated metal valves, namely, ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, spray ball valves, or for example, valves of metal, namely, ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, spray ball valves, other than parts of machines},  used in  all of the aforementioned valves being for use in the sanitary, beverage, dairy, food (,) and  pharmaceutical, chemical, industrial, instrumentation, hygienic, and cryogenic fields

 

 

 

Class 7:           Valves being parts of machines, namely, metal valves used in cleaning machines for gas turbine and combustion engines,  butterfly valves being parts of machines, namely, {applicant must specify the functions contemplated}, ball valves being parts of machines, namely, {applicant must specify the functions contemplated}, sampling valves being parts of machines, namely, {applicant must specify the functions contemplated},  check valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated}, diaphragm valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated}, actuated valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated, for example, hydraulic valve actuators, or for example, pneumatic valve actuators}, plug valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated}, relief valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated}, and spray ball valves being parts of machines, namely, {applicant must specify the valves’ functions contemplated};  all of the aforementioned valves being for use in the sanitary, beverage, dairy, food (,) and  pharmaceutical, chemical, industrial, instrumentation, hygienic, and cryogenic fields

 

 

 

Class 9:           Actuated valves, namely, electric valve actuators

 

 

 

Class 11:         Valves, namely, ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, and spray ball valves, all of the aforementioned valves being for plumbing and heating and cooling installations

           

           

 

Class 17:         Valves, namely,  ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, and spray ball valves, all of the aforementioned valves being rubber, manually operated valves for use in the sanitary, beverage, dairy, food (,) and  pharmaceutical, chemical, industrial, instrumentation, hygienic, and cryogenic fields

 

 

 

Class 19:          Stainless tubing, pipe, fittings, valves of all types used in Sanitary, beverage, dairy, food and pharmaceutical, chemical, industrial, instrumentation, hygienic, cryogenic, namely, weld fittings, clamp fittings, I-Line fittings, bevel seat fittings, John Perry fittings, Q-Line fittings, pipe size fittings, ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, spray ball valves, sanitary gaskets, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, pressure gages, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, sight glasses, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, sanitary pumps, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, pump parts, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, tube hangers, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, strainers, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, filters, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, swivel joints, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, threaded and socket weld fittings, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, pipe nipples, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, plate flanges, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, forged flanges, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, hoses, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, hose stems, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, crimp ferrules, namely, {applicant must specify the goods and functions contemplated and reclassify accordingly}, custom stainless steel fabrication

 

 

 

Class 20:         Valves, namely,  ball valves, butterfly valves, sampling valves, check valves, diaphragm valves, actuated valves, plug valves, relief valves, and spray ball valves, all of the aforementioned valves being plastic, manually operated valves, all of the aforementioned valves being for use in the sanitary, beverage, dairy, food (,) and  pharmaceutical, chemical, industrial, instrumentation, hygienic, and cryogenic fields

 

 

 

Class 40:         Custom stainless steel fabrication to the order and specification of others

 

 

 

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

Additional Fees May Be Required

 

The application identifies goods and/or services that are classified in at least eight classes; however, applicant submitted a fee(s) sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

 

Filing Fees: TEAS RF

 

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.

 

 

 

Requirements For Application Based On Use Under Trademark Act Section 1(a)

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least eight classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for Class 6.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

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. 

 

 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

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.  

 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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 7/3/2019 FOR U.S. APPLICATION SERIAL NO. 88392207

 

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 7/3/2019 (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.