Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 06, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 7, 2020.

 

In a previous Office action dated August 30, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1 and 45 refusal for failure to show use of the applied-for mark in commerce.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and services and, as required, satisfy any corresponding multiple-class application requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal has been obviated:  Trademark Act Sections 1 and 45 refusal for failure to show use of the mark in commerce.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods and Services
• Multiple-Class Application Requirements

 

IDENTIFICATION OF GOODS AND SERVICES

Applicant must clarify the wording “Welding machine components, namely . . . busbars” in the identification of goods in International Class 7 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not clarify whether the goods are replacement parts welding machines or exist independently as products that are electrical in nature.  As a result, this wording could identify goods in more than one international class.  For example, busbars as independent electrical products are in International Class 9 and busbars intended as replacement parts for welding machines would be classified in International Class 7. 

 

Applicant may substitute the following wording, if accurate:

 

CLASS 7:        Electric welding guns; Welding electrodes; and Welding machine components, namely adaptors for electrodes and electrode caps, shunts, electrode holders, electrodes, electrode caps, and busbars as replacement parts for welding machines.

 

CLASS 9:       Welding machine components, namely, busbars

 

CLASS 40:      [No clarification required]

 

CLASS 42:      [No clarification required]

.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application references goods and 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 fees 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 four classes; however, applicant submitted fees sufficient for only three 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 specimen is acceptable for classes 7, 9, 40, and 42.  See more information about specimens.  No further specimen(s) is required.

  

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7).  And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $275 per class (instead of $400) when adding a class.  For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Jeffrey Oakes/

Trademark Examining Attorney

Law Office 128

U.S. Patent and Trademark Office

(571) 272-8653

Jeffrey.Oakes@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 06, 2020 for

U.S. Trademark Application Serial No. 88464661

 

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. 

 

 

Oakes, Jeffrey

/Jeffrey Oakes/

Trademark Examining Attorney

Law Office 128

U.S. Patent and Trademark Office

(571) 272-8653

Jeffrey.Oakes

 

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 March 06, 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.”