To: | PAW ACQUISITION, LLC (trademarks@bakerdonelson.com) |
Subject: | U.S. Trademark Application Serial No. 88471552 - PRIME GUARD - 2936987-03 |
Sent: | September 06, 2019 03:03:05 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88471552
Mark: PRIME GUARD
|
|
Correspondence Address: BAKER, DONELSON, BEARMAN, CALDWELL & BER
|
|
Applicant: PAW ACQUISITION, LLC
|
|
Reference/Docket No. 2936987-03
Correspondence Email Address: |
|
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: September 06, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The wording “cooling additives for radiators” in Class 1, “Automotive rubberized undercoating” in Class 2, “automotive degreaser…automotive air intake cleaners; battery cleaner and protector; electric parts cleaner; automotive foam cleaner” in Class 3, and “chain lubricant…penetrating oils; …hydraulic jack oil” in Class 4 must be clarified because it is indefinite and/or too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, applicant must state whether the cooling additives in Class 1 are chemical or non-chemical. Chemical additives are in Class 1, but non-chemical additives are in Class 4. In Class 2, applicant must specify the purpose of the undercoating. In Class 3, applicant must indicate whether the degreaser is for manufacturing purposes or non-manufacturing purposes. Degreasers for manufacturing purposes are in Class 1 and those for non-manufacturing purposes are in Class 3. With regard to the word “cleaner” or “cleaners” in the unacceptable wording in Class 3, applicant must further clarify the nature of the cleaner or cleaners. Cleaning preparations are in Class 3, but other types of goods such as a cleaning tools are in other classes, e.g. “Class 21: Cleaning brushes for automobile air intake systems, batteries and electric automobile parts.” Applicant must clarify the nature of the battery protector and the purpose. This wording is broad enough to encompass goods such as “Class 1: Chemical preparations for protecting batteries from corrosion,” “Class 2: Anti-corrosive protective coatings,” “Class 9: Protective battery cases.” In Class 4, applicant must further describe the area of use of the chain lubricant and the purpose of the lubricant. It must also indicate the purpose of the oils. Automotive and hydraulic jack oils could encompass anti-rust oils, which are in Class 2.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (specifics and suggested amendments in bold text):
Class 1: Diesel exhaust fluid; chemical additives for fuel treatment; Chemical cooling additives for radiators; Chemical preparations for protecting batteries from corrosion {moved from Class 3}
Class 2: Automotive rubberized undercoating for {specify purpose, e.g. inhibiting corrosion and protecting against moisture}
Class 3: Automotive glass cleaner; car washing preparations; automotive degreaser, other than for use in manufacturing processes; automotive windshield
wash; automotive air intake cleaning preparations; battery cleaning preparations and protector {given the area
of use of the goods, it appears that the protectors are Class 1 types of products}; electric parts cleaning preparations; automotive foam cleaning
preparations
Class 4: Belt dressings; automobile chain lubricant; automotive multipurpose lubricants and penetrating lubricating oils; automotive silicone lubricants; lubricating white lithium grease; hydraulic jack lubricating oil; automotive silicone
lubricants {duplicate}
Class 12: Belts for land vehicle transmissions
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 CLASSES
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in more than 5 classes; however, applicant submitted a fee(s) sufficient for only 5 classes. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CLOSING
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Jean H. Im/
Trademark Examining Attorney
Law Office 101
U.S. Patent and Trademark Office
571-272-9303
jean.im@uspto.gov
RESPONSE GUIDANCE