To: | Welform Electrodes, Inc. (docketing@reising.com) |
Subject: | U.S. Trademark Application Serial No. 88464661 - WE - 8677-3005-1 |
Sent: | August 30, 2019 09:13:03 AM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88464661
Mark: WE
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Correspondence Address: 755 W BIG BEAVER ROAD, STE. 1850
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Applicant: Welform Electrodes, Inc.
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Reference/Docket No. 8677-3005-1
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 30, 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).
SPECIMEN PARTIAL REFUSAL – SUBSTITUTE REQUIRED
THIS PARTIAL REFUSAL APPLIES TO CLASS 7 ONLY
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a true copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.
(2) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Step-by-Step Instructions Submitting a Substitute Specimen:
To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should
(1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted:
(2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”;
(3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes);
(4) describe what the specimen consists of; and
(5) select the following statement: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application”
Note: When submitting a verified substitute specimen, the TEAS online response form requires TWO signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF GOODS AND SERVICES
The application identifies “Welding guns; Welding electrodes; and Welding machine components, including cap adaptors, shunts, electrode holders, electrodes, and buss bars” in International Class 7.
The wording “Welding guns” in the identification of goods is indefinite and must be clarified because it does not indicate the type of the machine with which it is used, such as a “gas welding gun.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The identification refers to “cap adaptors,” which may refer to welding cap adapters that are not components of welding machines but welding helmets that allow the attachment of visors, which must be clarified. Finally, the term “buss bars” in the identification appears as a typographical misspelling of the term “busbar,” which requires clarification.
The application also identifies “Design, engineering, development, and testing services in the fields of welding and material joining; and Custom manufacture of components for welding machines and welding guns” in International Class 42.
These services are classified incorrectly. In short, the custom manufacture of goods to the specification(s) of others is classified in International Class 40. As such, the applicant may delete this wording or must amend the application to properly classify the services in International Class 40. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Applicant may substitute the following wording, if accurate:
CLASS 7: Gas welding guns; Welding electrodes; and Welding machine components, namely, cap adaptors, shunts, electrode holders, electrodes, and busbars.
CLASS 40: Custom manufacture of components for welding machines and welding guns
CLASS 42: Design, engineering, development, and testing services in the fields of welding and material joining
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
(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 services based on use in commerce that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes. 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 specimens are acceptable for classes 40 and 42. However, for the reasons noted previously, the applicant needs a specimen for class 7. 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.
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
/Jeffrey Oakes/
Jeffrey Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
(571) 272-8653
Jeffrey.Oakes@uspto.gov
RESPONSE GUIDANCE