United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:  February 25, 2020

 

 

PRIORITY ACTION

 

Applicant must address issues shown below.  On February 25, 2020, the examining attorney and Kenneth Suzan discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

IDENTIFICATION OF GOODS:

 

The amended identification of goods for class 4 and 21 is indefinite and must be clarified because applicant must specify the type of oil and “non-metal fluid measuring and dispensing containers” is overly broad and potentially misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

International Class 4: Motorcycle engine oil; motorcycle chain lubricant; lubricating grease; motor vehicle lubricants; fiber filter oil, namely a [applicant must specify type of oil, i.e. engine, motor, industrial]  oil aiding in filtration of particulates for vehicle air filters; foam filter oil, namely a [applicant must specify type of oil, i.e. engine, motor, industrial] oil aiding in filtration of particulates for vehicle air filters

 

International Class 20: Mirrors; lock, not of metal, for vehicles; automotive nonmetal oil change pans not of metal; motorcycle fluid drain pans not of metal; drum drain pans not of metal; non-metal bins for organizing small parts and tools; stools; Non-metallic containers for chemical fluids and fluid dispensers connectable to such containers for use therewith to dispense chemical fluids from such containers all for industrial use

 

International Class 21: Automotive oil funnels; spouted automotive oil funnels; non-metal fluid measuring and dispensing containers [this item is overly broad because it can refer to an item in class 9, 20 or 21 without further clarification- the examining attorney has suggested wording in class 20]; jug spout hose benders; jug vent caps; jug caps; jug spouts; utility jugs; wire brushes not being machine parts; carburetor jet cleaning tool, namely cleaning brushes for carburetors

 

 

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.

 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

IDENTIFICATION OF GOODS:

 

The identification of goods for classes 7 and 8 is amended to read as follows: 

 

International Class 7: Motorcycle power tools and accessories, namely, impact drivers; air filters and oil filters for motorcycle motors and engines; oil drain plugs for engines; fuel filters; fuel o-rings for motorcycles; air compressors; pneumatic brake fluid bleeder, namely a tool that connects to an air compressor to drain brake fluid from vehicles; brake fluid extractor, namely a pneumatic tool for removing brake fluid from vehicles; oil and fluid extractors, namely a pneumatic tool for removing oil and fluid from vehicles; motorcycle parts washing kits comprising a submersible pump, basins with cord and hose, and cleaning brush; damper shock controlled manually operated lifts for motorcycles [this item is properly classified in class 8]; wire brushes for use in machines; machine parts, namely bearing and bushings; fuel line tool kit comprised of fuel line clamps, hose line removers, crimping tools, and hose clamp tools; hand operated drum pumps [this item is properly classified in class 8]; spark plug protectors; motor muffler plugs; engine seals, namely motorcycle fork oil seals and dust wiper seals; motorcycle exhaust muffler springs

 

International Class 8: Motorcycle hand tools and accessories, namely, wrenches, torque wrenches, hex key wrenches, allen wrenches, axle wrenches, star wrenches, spoke wrenches, spark plug wrenches, crow foot wrenches, timing cover plug wrenches, spanner wrenches, stem steering wrenches, oil filter wrenches; flywheel puller, flywheel holder tool, hand operated impact driver, manually operated flywheel starter puller, chain breaker tool, stud extractor, stud installation drivers; wire strippers, seal pullers, hand tools in the nature of nut drivers, piston ring compressors; valve spring compressors; hand operated valve removal tool; hand tools, namely, a steering stem bearing installer; hand tools, namely bearing race and race seal drivers; hand tools, namely, bearing pullers, hand tools, namely oil ring pullers, hand tools, namely oil seal pullers, hand tools, namely piston pin pullers, hand tools, namely screw extractors; safety wire pliers, hand tools, namely carburetor adjusters, carburetor wrenches,; valve clearance wrenches, piston ring installers; honing tool sets comprised of honing tool, tips and stones; tap and die wrench sets; pliers; hand operated hose cutters; screwdrivers; multifunction hand tools comprised of screwdrivers, wrenches and sockets; spark plug sockets being hand tools; ratchet wrenches; sockets wrenches; hand tools, namely palm ratchets; hand tools, namely thread repair files; hand tools, namely spark plug hole rethreaders; crankcase splitter separators tool; safety wire drill guides; hand operated banding tools; wobble extension bars; ratchet handles ratchets; reach adjustment screwdrivers; t-handles wrenches; fork cap wrenches; wrench accessories, namely fork cap nut sockets, hand tools, namely fork cap removers, hand tools, namely damper rod fork tool, hand tools, namely damper rod holding tools, hand tools, namely fork seal installers, hand tools, namely steering stem bearing removal tools; steering stem bearing press kit comprising manually operated bearing press tool and bearing race drivers; hand tools, namely a steering stem bearing installer; hand tools, namely stem bearing removers; hand tools, namely clutch holder tools; motorcycle clutch and primary tools, namely clutch holding tools; brake bleeder tools, namely hydraulic brake bleeders; hand tools, namely caliper pistons and brake pad spreaders; hand tools, namely brake piston pullers; hand tools, namely valve stem mounting tools; hand operated tire valve repair tool; tire irons; hand tools, namely tire valve pullers; hand tools, namely tire valve removers; hand operated pry bars; tire and tube flat repair kits comprising plug insertion tool, hole cleaner, glue, pressure wheel, knife, air cylinders, air valve, and patches; hand tools, namely tire valve core tools; tire spoons; manually operated tire bead breakers; chain press tool; chain alignment tool; hand tools, namely hex axle tools; hook and pick sets comprised primarily of picks and hand hooks; gasket scrapers; hand tools, namely exhaust spring hooks; hand tools, namely motorcycle cable lubers; vises; vise inserts; tool aprons; automatic center punch tools, namely a manually operated punch for making a starter dimple without the need for a hammer; hand-operated automotive repair tools, namely, magnetic pick-up tools; electric housing terminal tools, namely wire terminal removal tools; hand operated drum pumps; damper shock controlled manually operated lifts for motorcycles

 

 

See TMEP §§1402.01, 1402.01(e).

 

 

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

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 February 25, 2020 for

U.S. Trademark Application Serial No. 88450598

 

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. 

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@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 February 25, 2020, 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.”