Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  October 29, 2019

 

This application was approved for publication on September 26, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Amended Identification of Goods Required

 

The stated requirement refers to the following goods only and does not bar registration for the other goods and/or services identified: “decontamination agents and preparations” in International Class 003.

 

The classification and identification of goods and services in the application are:

 

Class 003:       Cleaning agents and preparations, namely, cleaning agents and preparations and decontamination agents and preparations for cleaning and decontaminating protective clothing and equipment, namely, clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

Class 037:       Cleaning services for protective clothing and equipment, namely, for clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

Class 040:       Fire particulate decontamination services for protective clothing and equipment, namely, for clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

The wording that is italicized in the identification of goods, above, must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording encompasses chemical decontamination agents, which are properly classified in International Class 001. 

 

Applicant may adopt any or all of the following identification, if accurate.  Applicant must also adopt the appropriate international class number(s), and, if applicant adopts goods and/or services in more than one class, it must comply with the multiple-class application requirements set forth below.  In the following, proposed amendments are in bold.

 

Class 001:       Chemicals for decontaminating protective clothing and equipment, namely, clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

Class 003:       Cleaning agents and preparations for cleaning and decontaminating protective clothing and equipment, namely, clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

Class 037:       Cleaning services for protective clothing and equipment, namely, for clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

Class 040:       Fire particulate decontamination services for protective clothing and equipment, namely, for clothing for protection against fire, garments for protection against fire, footwear for protection against fire, gloves for protection against fire, helmets for protection against fire, hoods for protection against fire, uniforms for protection against fire and fire protective equipment

 

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.

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Multiple-Class Application Requirements

 

The application identifies goods and 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):

 

(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 and services that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 3 classes.  Applicant must either submit the filing fee for the class 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.

 

In addition to amending the identification as set forth above, applicant may respond to the stated requirement by doing one of the following:

 

(1)  Deleting the goods to which the requirement pertains; or

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration so that the mark may proceed toward publication for opposition for those goods and/or services to which the requirement does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to this Office action.  37 C.F.R. §2.87(e).

 

Response to Office Action Required to Avoid Abandonment

 

Applicant is encouraged to email the assigned attorney below to resolve the issue in this Office action.

 

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  

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 October 29, 2019 for

U.S. Trademark Application Serial No. 88477898

 

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. 

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 October 29, 2019, 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.”