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:  July 17, 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 Results

 

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).

 

Requirement - Identification of Goods

 

The identification of goods must be clarified because it is indefinite, too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Further, the identification for various “systems” is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

Applicant may adopt the following identification, if accurate.  Please note that the wording subject to this requirement and the suggested changes made by the trademark examining attorney appear in bold.  Further, the wording contained in brackets and/or italicized is merely for guidance in responding to this requirement, and should not be included in applicant’s amended identification. 

 

Metal hooks; Abrasive disc roll dispensers of metal; metal picture hangers; general purpose metal storage containers; metal storage containers, namely, general purpose metal caddies; metal ropes; brackets of metal for {indicate the purpose in this class, e.g., for furniture, gutters, shelves, building, etc.}; metal stanchions; non-electric cables and wires of common metal; anchors of metal; clips of metal for cables and pipes; materials and structures of metal or predominantly of metal for fall protection and safety equipment, namely, work platform systems comprised of {indicate the parts of components, e.g., prefabricated metal platforms}, conveyor crossover systems comprised of {indicate the parts of components}, frame systems comprised of {indicate the parts of components, e.g., metal doors frames, metal window frames, etc.}, ladder systems comprised of {indicate the parts of components, e.g., metal ladders, etc.}, and custom access systems comprised of {indicate the parts of components}; ladders of metal; guard rails and parts and fittings thereof, all of metal or predominately of metal; metal fasteners, namely, bolts and screws; connectors of metal for {indicate the purpose in this class, e.g., for decking and decking joints, pipes, etc.}; frame systems of metal comprised of {indicate the parts of components, e.g., metal doors frames, metal window frames, etc.}; metal hardware for use in descending ropes, namely, descenders; metal hardware, namely, carabiners of metal; metal pipe collars; metal plugs; equipment hardware for safety and fall protection of metal or predominately of metal, namely, anchors, fasteners, cable guides, lanyards, rope grabs, and davit arms; metal pulleys; metal rope grabs; metal safety hooks; metal safety slides; metal fall arresters for use with harnesses; descending devices made of metal or predominately of metal, namely, {indicate the common commercial name of the devices in this class, e.g., metal hardware for use in descending ropes in the nature of belays and descenders}; fixed and portable custom access and work platform systems comprising supported ladder systems, namely, systems comprised of {indicate the parts of components, e.g., metal ladders, etc.}, prefabricated metal work platforms, and railings of metal or predominately of metal; metal frame systems comprised of {indicate the parts of components, e.g., metal doors frames, metal window frames, etc.}

 

If applicant needs to add an additional class to the application as a result of this requirement, please see the multi-class requirements detailed below.

 

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.

 

NOTICE:  Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Multi-Class Application Requirements

 

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 based on use in commerce that are classified in more than one class; however, applicant submitted a fee(s) sufficient for only one class(es).  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(es) 006; and applicant needs a specimen for additional classes added.  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. 

 

(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.

 

If applicant chooses to respond to the foregoing refusal(s)/requirement(s), then applicant should note the following advisory(ies).

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/Deirdre G. Robertson/

Deirdre G. Robertson

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@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.

 

U.S. COUNSEL RULES CHANGES ADVISORY:  On Augusts 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 17, 2019 for

U.S. Trademark Application Serial No. 88443790

 

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. 

 

 

/Deirdre G. Robertson/

Deirdre G. Robertson

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@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 July 17, 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.”