To: | CFS Concrete Forming Systems Inc. (sdp@chernofflaw.com) |
Subject: | U.S. Trademark Application Serial No. 88453331 - SNAPLOCKTIGHT - 10128.0008 |
Sent: | August 26, 2019 06:46:48 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88453331
Mark: SNAPLOCKTIGHT
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Correspondence Address: |
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Applicant: CFS Concrete Forming Systems Inc.
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Reference/Docket No. 10128.0008
Correspondence Email Address: |
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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: August 26, 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:
SEARCH OF OFFICE’S DATABASE OF MARKS
IDENTIFICATION AND CLASSIFICATION OF GOODS
Applicant has applied for the following identification of goods:
Class 19: stay-in-place concrete forms for fabricating, structurally reinforcing and protecting agriculture buildings; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting food processing buildings; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting cold storage and clean rooms; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting parking garages, and vehicle washes; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting walls of rooms and room surfaces; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting tanks for agriculture, aquaculture, waste water treatment and biodigesters; stay-in-place concrete forms for fabricating, structurally reinforcing and protecting structures fabricated from concrete; liner panels for tilt-up walls for buildings; modular panels of plastic inserted into form-work used for casting precast concrete structures, so that the resulting concrete structures are clad with the panels; stay-in-place forms for fabricating, structurally reinforcing and protecting new construction concrete columns and for restoring existing concrete columns; modular panels and trims of plastic for cladding walls and ceilings of structures
The identification of goods is indefinite and must be clarified because it does not specify the nature of the applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the applicant must clarify the nature of its concrete forms. 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.
Further, the wording “stay-in-place concrete forms” identify goods in more than one international class. For example, “non-metal modular stay-in-place concrete casting forms” are in International Class 19, and “metal modular stay-in-place concrete casting forms” are in International Class 6. Additionally, the wording “liner panels” and “panels and trims” could also be qualified as either metal or non-metal goods in either Class 6 or Class 19. Therefore applicant must amend the application in order to clarify the goods.
Applicant may adopt the following wording, if accurate:
Class 6: Metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting agriculture buildings; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting food processing buildings; metal modular stay-in- place concrete casting forms for fabricating, structurally reinforcing and protecting cold storage and clean rooms; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting parking garages, and vehicle washes; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting walls of rooms and room surfaces; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting tanks for agriculture, aquaculture, waste water treatment and biodigesters; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting structures fabricated from concrete; METAL liner panels for tilt-up walls for buildings; metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting new construction concrete columns and for restoring existing concrete columns
Class 19: NON-Metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting agriculture buildings; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting food processing buildings; NON-metal modular stay-in- place concrete casting forms for fabricating, structurally reinforcing and protecting cold storage and clean rooms; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting parking garages, and vehicle washes; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting walls of rooms and room surfaces; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting tanks for agriculture, aquaculture, waste water treatment and biodigesters; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting structures fabricated from concrete; NON-METAL liner panels for tilt-up walls for buildings; NON-METAL modular panels of plastic inserted into form-work used for casting precast concrete structures, so that the resulting concrete structures are clad with the panels; NON-metal modular stay-in-place concrete casting forms for fabricating, structurally reinforcing and protecting new construction concrete columns and for restoring existing concrete columns; NON-METAL modular panels and trims for lining walls and ceilings of structures
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.
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) and 44:
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ADVISORY: DUAL FILING BASIS
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 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), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action
Solite, Joshua
RESPONSE GUIDANCE