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:  August 16, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

·       Prior-Filed Pending Applications May Bar Registration

·       Section 2(d) Partial Refusal – Likelihood of Confusion

·       Ownership of Cited Registrations and Potentially Conflicting Applications

·       Section 2(e)(4) Refusal – Mark is Primarily Merely a Surname

·       Classification and Identification of Goods Partial Requirement

·       Multiple-Class Application Requirements

 

PRIOR-FILED PENDING APPLICATION MAY BAR REGISTRATION

 

The filing dates of pending U.S. Application Serial Nos. 86445201, 87638188, 88253971, 88338767, 88338774, 88388032, and 88446574 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1657177, 4864715 and 5355340.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The applied-for mark is HART featuring design for a variety of goods, including power and hand tools and their accessories and parts.

 

This refusal does not apply to the goods that are not encompassing/identical with the registered goods or are construction/building/digging type goods.  For example, this refusal does not apply to: the goods in International Class 003, metal bicycle storage racks, polishers, buffers, swimming pool cleaners, electric door openers and closers, electric pumps, vacuum cleaners, food blenders, paint removing machines, cameras, magnifying glasses, inverters, speakers, massage and rehabilitation apparatus, lighting apparatus, cooling and air cleaning apparatus, bug repellant and killing apparatus, furniture, transportation goods, goods in International Class 016, portable coolers, sleeping bags, and games and toys and goods like the foregoing.

 

The registered marks, registered by the same owner, are:

 

• HART in standard character format (U.S. Registration No. 1657177) for “construction hand tools, namely, hammers” in International Class 008;

 

• HART in standard character format (U.S. Registration No. 4864715) for “Pneumatic roofing cutters; accessories for pneumatic roofing cutters, namely, blades and blade kits comprised of blades” in International Class 007; “Axes; hatchets; electrician's bolster being hand-operated cutting tools; hand-operated tools, namely, floats for grout, mortar or cement, chisels, masonry chisels, club hammers, sledge hammers, mattocks, mauls, molding bars, pry bars, wedges, clamps, and trowels; knives; utility knives; hand-operated tools for working with tile, drywall and masonry, namely, trowels, floats; kits comprised primarily of hand-operated tools, namely, trowels and also including one or more floats, an interchangeable handle system comprised of a reversible handle with an adjustable clamp and/or a storage box for the components of the kit; replacement parts for hand-operated trowels and floats, namely, handles” in International Class 008; “tape measures” in International Class 009; and “Plastic storage containers for commercial or industrial use” in International Class 020; and

 

• HART in standard character format (U.S. Registration No. 5355340) for “nail pulling bars, screwdrivers” in International Class 008.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, the marks are identical in appearance, sound and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

Similarity of the Goods

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, many of the goods in the application and registrations are identical and encompassing, which makes them legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).  For example:

 

• The applied-for “hammers”, “club hammers” and “sledge hammers” are identical to and encompassing with “hammers” in U.S. Registration No. 1657177 and “club hammers” and “sledge hammers” in U.S. Registration No. 4864715;
• “Pneumatic roofing cutters” and “accessories for pneumatic roofing cutters, namely, blades and blade kits comprised of blades” are identical in the application and U.S. Registration No. 4864715;
• “Nail pulling bars” and “screwdrivers” are identical in the application and U.S. Registration No. 5355340;
• “Kits comprised primarily of hand-operated tools, namely, trowels and also including one or more floats, an interchangeable handle system comprised of a reversible handle with an adjustable clamp and/or a storage box for the components of the kit” is identical in the application and U.S. Registration No. 4864715;
• “Axes” and “hatchets” are identical in the application and U.S. Registration No. 4864715; and
• “Plastic storage containers for commercial or industrial use” is identical in the application and U.S. Registration No. 4864715.

 

Ultimately, a majority of the goods in the registrations are encompassing or identical with the applied-for goods, and many of the other goods in application are related to those in the registrations because they are construction/building tools and travel through the same narrow trade channels and are of a kind that commonly emanate from the same source.  As an example, the attached evidence from The Home Depot demonstrates that single entities manufacture roof cutters, saws and drills under the same name.

 

Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Accordingly, when purchasers encounter the applied-for and the registered goods offered under highly similar marks, they are likely to be confused as to the source of the goods.  Thus, the goods identified in the application and the registered goods are considered related for the purposes of the likelihood of confusion analysis.

 

Thus, use of the marks HART and HART by different parties with the identified goods is likely to lead to consumer confusion or mistake as to the source of the goods.  Therefore, registration is refused under Trademark Act Section 2(d).

 

OWNERSHIP OF CITED REGISTRATIONS AND POTENTIALLY CONFLICTING APPLICATIONS

 

If the marks in the cited registrations and potentially conflicting prior-filed applications are owned by or have been assigned to applicant, applicant may provide evidence of ownership of the marks by satisfying one of the below to obviate the refusal/avoid possible refusal under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); TMEP §812.01.

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 1657177, 4864715 and 5355340 and Application Serial Nos. 86445201, 87638188, 88253971, 88338767, 88338774, 88388032, and 88446574.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(4) REFUSAL – MARK IS PRIMARILY MERELY A SURNAME

 

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

Applicant seeks to register HART in standard character format for a variety of goods, including power and hand tools, plastic containers, bicycle racks, sleeping bags and blankets, games and toys, furniture, lawn and garden equipment, batteries and battery chargers, massage apparatus, and more.

 

An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods, “‘is the primary significance of the mark as a whole to the purchasing public.’”  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.

 

The following five inquiries are often used to determine the public’s perception of a term’s primary significance:

 

(1)       Whether the surname is rare;

 

(2)       Whether anyone connected with applicant uses the term as a surname;

 

(3)       Whether the term has any recognized meaning other than as a surname;

 

(4)       Whether the term has the structure and pronunciation of a surname; and

 

(5)       Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985). 

 

These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination.  In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01.  For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry.  In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.

 

The wording HART is a common surname. Please see the attached evidence from the LEXISNEXIS® surname database establishing the surname significance of the wording HART.  This evidence shows the first 100 out of 7,315 results of the wording HART appearing as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. 

 

The existence of other non-surname meanings of a mark does not preclude the mark from being held primarily merely a surname.  Miller v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); see In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ2d 238, 239 (C.C.P.A. 1975); In re Hamilton Pharms. Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993).  The issue is not whether a mark that has surname significance might also have a non-surname significance, but whether, in the context of an applicant’s goods or services, the non-surname significance is the mark’s primary significance to the purchasing public.  Miller v. Miller, 105 USPQ2d at 1621; see In re Harris-Intertype Corp., 518 F.2d at 631, 186 USPQ2d at 239; In re Hamilton Pharms. Ltd., 27 USPQ2d at 1942.  The attached evidence from Merriam-Webster demonstrates the dictionary meaning of HART is “chiefly British” and HART is primarily known as a surname; therefore, is less likely that American purchasers will be familiar with the dictionary meaning over the surname significance.

 

This contention is bolstered by the fact that many other known surnames include HART, such as Hartman, Reinhart and Hartley.  See attached evidence Surname DB.  Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).

 

Additionally, HART is the surname of a well-known and publicized actor, comedian and businessman, Kevin Hart.  See attached evidence from LEXISNEXIS® and Google News demonstrating his name frequently appearing in the news.  If a surname appears routinely in news reports or articles and receives media publicity so as to be broadly exposed to the general public, then such surname is not rare and its primary significance to purchasers would be that of a surname, such as in this case.  See In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v).    Therefore, purchasers are familiar with HART as a surname.

 

Accordingly, as HART is structured as other surnames and routinely appears as a surname in the news, it is likely that purchasers will view the mark as a surname.  Therefore, the primary significance of the mark is that of surname significance, and as such, registration is refused under Trademark Act Section 2(e)(4) for the applied-for mark being primarily merely a surname.

 

Response Option(s)

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

ADVISORY: the following response option is not available for goods that are not sufficiently related to prior registered goods.

 

An intent-to-use applicant who has used the same mark on related goods may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)       Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods; and

 

(2)       Applicant must show sufficient relatedness of the goods in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS PARTIAL REQUIREMENT

 

Several clauses in the identification of goods is indefinite and must be clarified because the wording is too broad, ambiguous and/or unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  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.

 

As most of the clauses require amendment, the general issues are explained here followed by suggestions on how to amend.

 

Identifications for “tools” must be clarified to make clear the nature of the specific tool because “tools” could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1402.01, 1402.03.  As an example, “power operated tools, namely,…rotary tools” must be clarified.

 

Machine tools and power-operated tools are generally classified in International Class 7; e.g., “power-operated tools, namely, buffers;” “pneumatic hammers;” “electric nail pullers;” and “machine tools for breaking up road surface material.”  Hand-operated tools are generally classified in International Class 8; e.g., “hand-operated cutting tools,” “pliers,” “manually-operated jacks,” and “hand tools, namely, socket wrenches.”  However, certain power-operated hand tools, such as “electric razors” and “electric hair clippers” are also classified in International Class 8.  Additionally, medical, dentistry, and veterinary tools are classified in International Class 10; e.g., “dental picks” and “medical cutting devices.”  Also, certain hand-operated tools, such as “corkscrews” and “flour sifters” are classified in International Class 21 as kitchen or household utensils, and certain hand-operated tools, such as “divot repair tools for golfers” are classified in International Class 28 as sporting articles.

 

For assistance with identifying the specific applied-for tools, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Also, the following wording, along with other wording as indicated in the suggestions, is too broad and could encompass a variety of goods, including goods in different international classes: inflators, guides, bags, cases, angles, shafts, scabbards, assembly tools, guns, adaptors, scrubbers, staple guns, knives, edge guides, nailers, general purpose knife blades, manual hand-held sprayers, USB power source, amp power spikes, chainsaw chaps, massage guns, vibrating heated massage rollers, heated wraps for rehabilitation, hybrid lights for indoor and outdoor use, workbench lights, hanging lights, cable lights, Christmas lights, lighting tower, electrically heated blankets, lighting units, universal drive joints, caution tape, garage work stations, cooling chairs, plastic bags for storage, and toy water gun with backpack.

 

The wording “accessories for power operated drills, namely, hex keys, center punches being hand tools” is ambiguous and unclear.  In particular, it does not seem that accessories for power-operated tools can also be hand tools; therefore, applicant must delete this wording or provide clarification and properly classify the goods.  Power-operated tools are generally in International Class 007 and hand-operated tools are generally in International Class 008.

 

Applicant is advised to delete or modify the duplicate entries in the identification of goods in International Classes 011 and 016 for “electrically heated sleeping bags” and “marking chalk,” respectively.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

While not required in all circumstances, applicant should separate different groups of goods by semicolon for clarity.

 

The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant has included the term “and/or” or “or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  As an example, applicant uses “and/or” to indicate whether a storage box is included in a kit in International Class 008.  This is unacceptable because kits must be definitely identified and the use of “and/or” here makes the kit indefinite because it is unclear whether the kit includes or excludes a storage box.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Accessories for finished goods must be classified according to their proper classification, and they are not simply classified in the class for which the item they are an accessory of is classified unless they are part of a kit, are a component part of the item or where applicable are specially adapted for a specific item.  See TMEP §§1402.01, 1402.03(a).  As an example, the various applied-for lubricants are properly classified in International Class 004 regardless of which tool they are used for lubricating.

 

Applicant has misclassified the below types of goods.  The proper classification for each item is as follows: 

 

• Lubricating oils – International Class 004
• Electronic signs – International Class 009
• Heat guns – International Class 011
• Lights – International Class 011
• Universal joints for land vehicles – International Class 012
• Paint rollers – International Class 016
• Plastic tape – International Class 017
• Chairs – International Class 020
• Cleaning sponges – International Class 021
• Electric devices for attracting and killing insects – International Class 021
• Sleeping bags – International Class 024

 

Additionally, applicant has provided the application fees for only sixteen international classes.  Thus, not all international classes in the application are covered by the application fees.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international classes for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Applicant may adopt the following wording, if accurate: 

 

International Class 003: (acceptable)

 

Cleaning solution for whiteboards

 

International Class 004:

 

Chain lubricants in the nature of lubricating oils for string trimmer chains; pole saw bar and chain lubricating oils; chainsaw bar and chain lubricating oils; lubricating oils for chainsaw engines

 

International Class 006: (acceptable)

 

Metal bicycle storage racks; tool chests of metal, empty; metal tool boxes; accessories for power operated drills, namely, metal chuck key holders, metal drill bit holders

 

International Class 007:

 

Power operated tools, namely, drills, drill drivers, impact drivers, hammer drills, tire inflators, grinders, screwdrivers, multi-purpose oscillating multi-tools for use with interchangeable heads for cutting, sanding, grinding, polishing, sawing, drilling, scraping, driving, fastening and/or hammering, circular saws, reciprocating saws, jigsaws, speed saws, miter saws, table saws, rotary tools in the nature of {specify tools, e.g., electric rotary hammers, rotary grinding machines, etc.} and station for rotary tools in the nature of holders for power-operated rotary tools; power operated tools, namely, power operated ratchet wrenches, screw guns, electric glue guns, pneumatic grease guns, electric scissors, electric soldering irons and accessories in the nature of component parts for electric soldering irons in the nature of including tips, solder coil, tip cleaning sponge and an accessory for electric soldering irons, namely, stations in the nature of a holder specially adapted for electric soldering irons; power operated tools, namely, drill presses, impact wrenches, right angle drills, right angle drill drivers, clutch drivers in the nature of drill drivers, torque drills, drill bits, joiners, namely, wood biscuit joiners, planers, polishers, routers, sanders, buffers, corded nailers nailing guns, battery nailers nailing guns, heat guns, sprayers, caulk guns; accessories specially designed for use with power operated joiners, namely, wood biscuits joiners; accessories for power operated planers, namely, storage cases specially adapted for power operated planers; accessories for power operated nail guns, namely, anti-friction pads; accessories specially designed for use with power operated polishers, namely, polishing bonnets in the nature of cloth polisher attachments, polishing wheels, compound sticks in the nature of metal stick cleaners, mandrels, screws, washers; accessories specially designed for use with power operated routers, namely, bits, collars, collets, collet wrenches, bit adaptors, cutting guides, bags specially adapted for holding power operated routers, tables specially adapted to hold power operated routers, miter gauges, throat plates in the nature of saw plates, starting pins in the nature of replacement plate for routers, feather boards in the nature of cutting guides, router fences for use on table routers, wrenches, mark indicators, safety guards; accessories specially designed for use with power operated sanders, namely, dust bags, cases specially adapted for holding power operated sanders, sandpaper, paper punches, sanding pads, scrubbing pads, polishing pads, stripping pads, backer pads, storage bags specially adapted for holding power operated sanders, sanding angles, polishing angles in the nature of {specify common commercial name}, sanding belts; power operated lawn and garden equipment, namely, string trimmers, blowers, chainsaws, hedge trimmers, cultivators, spreaders, chemical sprayers, edgers, pole saws, shears, automatic floor scrubbers for lawn care; accessories in the nature of component parts for power operated lawn and garden equipment, namely, accessories component parts for power operated backpack blowers, namely, bellows, tubes, nozzles, tube clamps, assembly tools in the nature of screws, nuts and bolts, cable ties; accessories in the nature of component parts for power operated blowers, namely, tubes, nozzles, screws, vacuum bags, vacuum bag adaptors; accessories in the nature of component parts and specially adapted parts for power operated string trimmers, namely, string trimmer lines spools, power heads, grass deflectors, spool caps, spools, scabbards for protecting trimmer blades, handles, string head inserts, dual spool fixed line adapters, funnels, hangar caps, wheel assemblies, head and/shaft assemblies, line carriers, bump knobs, spool cap covers, blower attachments comprised of blowers, attachment cam shafts, attachment securing caps, brushcutter attachment comprised of brushcutters, handle assemblies, shoulder harnesses, bags specially adapted for attachment to power operated string trimmers, gear head locking tools in the nature of locks, pruner attachments comprised of pruners, scabbards for protecting {specify}, chain lubricants, combination wrenches, extension shafts couplings, shoulder straps specially adapted for attachment to power operated string trimmers, shoulder hangers specially adapted for power operated string trimmers, pole saw attachments comprised of poles, scabbards for protecting {specify}, hex keys, bar and chain lubricants, shoulder harnesses specially adapted for attachment to power operated string trimmers, power tiller attachments comprised of tillers, handles with mounting hardware, hitch pins, washers, tines; accessories in the nature component parts for chain saws, namely, power heads, gas caps, bar and chain lubricants,  scabbards for protecting {specify}, combination wrenches, engine lubricants, cases specially adapted for holding chainsaws, poles, chain saw tune up kits comprised of spark plugs, primer bulbs, fuel filters, air filters; accessories in the nature of component parts for power operated cultivators, namely, in the nature of cultivator tines, tine spacers, wheels, wheel and /drag bar assemblies, wheel and /drag bar adjustment knobs, hitch pins, washers; accessories in the nature of component parts for power operated edgers, namely, blades, wheel assemblies, power heads, string head and /shaft assemblies, grass deflectors, line carriers, lines, funnels; accessories for power operated hedge trimmers, kits comprising namely, hedge trimmers, cam shafts, blade covers; accessories in the nature of component parts for power operated pole saws, namely, bar and chain lubricants, chains, scabbards for protecting {specify}; power tool accessories, namely, door lock installation kit comprised of a hole saw and drill bits; accessories in the nature of kits for power operated drills, namely, comprising drill bits, chucks, chuck keys, chuck key holders, depth rods in the nature of metal rods that attach to drills, hex keys specially adapted for power drills, screw guides, shaft bit extensions, cases specially adapted for power drills, bags specially adapted for holding power drills, drill shanks, bit holders, socket power adaptors, hole saw mandrels, countersinks, power drill center punches, arbor adapters in the nature of arbor presses and arbor drill presses, nut setters, power tap and die sets, edge guides, wing nut bolt drivers; accessories in the nature of kits for power operated grinders comprising, namely, spindles, lights specially adapted for power grinders, grit abrasive wheels, wire wheels, grinding wheels, wire brushes, safety shields as structural parts of power operated grinders, work rests, diamond wheel dressing tools in the nature of diamond cutting wheels, wrenches, masonry wheels, polishers, sanders and paint removers; vacuum cleaners; wet-dry vacuums; lawn mowers; electric sweepers; lawn vacuums; electric knives; gas-operated and electric generators; snow blowers; high pressure washers and accessories in the nature of kits for high pressure washers comprising including spray guns, hoses, nozzles, nozzle adaptors, pressure regulators being parts of pressure washers, tips, filters, cleaners in the nature of and sprayer wands; electric augers; power-operated jacks; winches; hoists; multi-purpose steam cleaners; automatic floor scrubbers; electric food blenders; power operated paint removing machines; electric door openers and closers; electric pumps; automatic swimming pool cleaners and parts therefor; power operated paint rollers; hand-held vacuum cleaners; pneumatic roofing cutters; accessories for pneumatic roofing cutters, namely, blades and blade kits comprised of blades; accessories for pneumatic tools, namely, drill bits, nut setters, impact drivers, screw guides, and driving bits; pneumatic staplers; pneumatic nailing machines nailers; power-operated roofing hammer tackers in the nature of combination staple gun and hammer; power-operated saws; accessories for power-operated saws, namely, blades; compressors, namely, gas compressors, electric compressors

 

International Class 008:

 

Manually operated hand tools, namely, punches, scissors, snips, pliers, wire strippers, wire cutters, hex keys, nail sets, axes, hatchets, hammers, nail pulling bars, screwdrivers, wrenches, socket sets, socket wrenches, ratchet wrenches; mechanics hand tools sets, namely, socket sets and ratchet wrench sets; multi-function hand tools comprised of {specify components, e.g., screwdrivers, knives, pliers, etc.}; hand-powered staple guns; pick axes; hand-operated tools, namely, jab saws, hack saws, mallets, roofing hammer tackers in the nature of combination staple gun and hammer; hand-operated tools, namely, floats for grout, mortar or cement; hand-operated tools, namely, chisels, masonry chisels, club hammers, sledge hammers, mattocks, mauls, molding bars in the nature of {specify common commercial name, e.g., cutter bars}, pry bars, wedges, clamps, trowels, shovels, rakes, forks in the nature of {specify the type of fork, e.g., digging forks }, post hole diggers and bolt cutters; knives, namely, {specify type of knives, e.g., sport knives, hunting knives, etc.}; utility knives; specially adapted parts and accessories for punches being hand tools, namely, {specify parts and accessories, e.g., nail punches, chisels, files, etc.}; universal drive joints; gardening tools, namely, spades, hoes, loppers, hand-operated pruners, hand-operated hedge trimmers in the nature of shears and hand operated spreaders for seed and dry lawn chemicals; hand tools, namely, sanding sponges, handsaws; hand-operated marking tools, namely, chalk line reels; hand-operated measuring tools, namely, squares; tool belts; accessories for hand-operated tools, namely, tool belt clips for holding tools; specially adapted parts and accessories for hand operated hand-operated spades, hoes, loppers, pruners, hedge trimmers and hand operated spreaders, namely, {specify parts and accessories, e.g., handles for spades}; blades for hacksaws; general purpose knife blades for {specify type of knives, e.g., sport knives}; manual hand-held sprayers for insecticide; manual hand-held chemical sprayers; accessories for power operated drills, namely, hex keys, center punches being hand tools; tap and die sets being hand tools; edge guides being hand tools; electrician’s bolster being hand-operated cutting tools; hand-operated tools for working with tile, drywall and masonry, namely, trowels, floats; kits comprised primarily of hand-operated tools, namely, trowels and also including one or more floats, an interchangeable handle system comprised of a reversible handle with an adjustable clamp and/or a storage box for the components of the kit; replacement parts for hand-operated trowels and floats, namely, handles

 

International Class 009:

 

Batteries and battery chargers; battery packs; USB power source, namely, electric batteries; thermometers, not for medical purposes; headphones; lighted magnifying glasses; cameras; protective ear covering shields; solar-powered battery chargers; electronic scoreboards; electrical power devices, namely, inverters for supplying low power amperage outdoors outdoor low amp power spikes; inverters; audio speakers; pool audio speakers for use in connection with pools; protective body cooling gear, namely, active cooling vests that cool down body temperature to prevent injury due to overheating; cooling chairs; knee pads for workers; radios; measuring wheels; magnetic or electric stud finders; circuit testers; chainsaw chaps in the nature of protective clothing featuring armor for protection against accident or injury that could be caused by a chainsaw; heated protective work gloves; protective work gloves; safety eyewear for construction; tape measures; long tape measures; measuring tools, namely, carpenter’s levels, bubble levels, laser levels; electric lighted caution signs

 

International Class 010:

 

Massage guns in the nature of a massage apparatus; massage apparatus, namely, vibrating heated massage rollers; body rehabilitation apparatus for medical purposes, namely, heated wraps for rehabilitation; ear plugs for noise reduction

 

International Class 011:

 

Lanterns for lighting; hybrid lights for indoor and outdoor use, namely, indoor and outdoor lighting fixtures; flood lights; spotlights; portable headlamps; workbench lights, namely, lamps; pen lights; hanging lights in the nature of lighting fixtures; cable lights in the nature of lighting fixtures; solar powered lights; Christmas lights, namely, electric lights for Christmas trees; lamps; mobile lighting tower which incorporates a misting system for outdoor cooling and audio speakers; electric space heaters; electric coolers; misting fans for cooling; air conditioners; misting systems for outdoor cooling; portable misting systems for outdoor cooling, namely, bucket topper misters; misting shelters for outdoor cooling; outdoor propane heaters; humidifiers; portable smokeless fire pits; electric and gas grills; electrically heated clothing; electrically heated jackets; electrically and lighted jackets; electrically heated seats; electrically heated mats; electrically heated sleeping bags; electrically heated blankets for household purposes; electrically heated sleeping bags; lighted caution signs; electric coffee makers; non-electric air diffusers comprised of a wick in a container used to emit scent sold without scented oil; electrical devices to be plugged into wall outlets having a heating element and which dispenses an insect repellent; electrical lighting devices for attracting and killing insects and bugs with integrated heating elements; heat guns; electric fans; LED lights, namely, namely, electric track lighting units and lighting fixtures, LED flashlights and LED work lights for construction settings; accessories for power operated grinders, namely, lights

 

International Class 012:

 

Mechanics’ creepers; electrically-powered motor scooters; wagons; drones; bicycle; tricycles not being toys; universal drive joints for land vehicles

 

International Class 016:

 

Stapling presses; marking chalk; erasers; paint rollers; markers; dry erase markers; highlighter pens; marking chalk; carpenter pencils; power operated paint rollers

 

International Class 017:

 

Hoses for pneumatic tools; electrical tape; caution tape in the nature of plastic, non-adhesive tape used to create a visual barrier to deny access to an area

 

International Class 020:

 

Tables; garage work stations, namely, work stations comprising work benches, work tables and metal storage cabinets; metal storage cabinets; work benches; non-metal tool boxes sold empty; saw horses; plastic storage containers for commercial or industrial use; chairs in the nature of furniture, also featuring a cooling function, not for medical purposes

 

International Class 021:

 

Non-electric portable coolers; plastic storage containers for household or domestic use; work gloves; gardening gloves; electrical lighting devices for attracting and killing insects and bugs with integrated heating elements; accessory for electric soldering irons in the nature of a tip cleaning sponge

 

International Class 022:

 

Plastic bags for storage of household items; and cloth bags for storage

 

International Class 024:

 

Sleeping bags; electrically heated sleeping bags

 

International Class 028:

 

Cornhole game sets; skateboards; toy foam dart shooters; remote control toys, namely, remote controlled cars; toy water gun with backpack sold as a unit; ride-on toys

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  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 identifies goods 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 that are classified in at least seventeen classes; however, applicant submitted a fees sufficient for only sixteen 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

RESPONSE GUIDELINES

 

For this application to proceed further, 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.  In addition, because applicant filed a TEAS Plus/TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.22(b)(1), (c).  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant does not respond to this Office action within the six-month period for response, the application process will terminate and the trademark/service mark will fail to register.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive at http://www.gov.uspto.report/trademarks/teas/index.jsp.  See 37 C.F.R. §2.66; TMEP §1714.  If such petition is granted, it would allow the application to return to active status.  Id.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed via TEAS, http://www.gov.uspto.report/trademarks-application-process/filing-online/petition-forms, with a $100 fee.  37 C.F.R. §2.6(a)(15)(ii), 2.66(a)(1), b(1).   

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S. licensed attorney authorized to practice before the USPTO, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. 

 

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 refusals and requirements 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  

 

 

/Brittany Lee-Richardson/

Trademark Examining Attorney

Law Office 116

571.272.9750

Brittany.Lee-Richardson@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 August 16, 2019 for

U.S. Trademark Application Serial No. 88480116

 

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. 

 

 

/Brittany Lee-Richardson/

Trademark Examining Attorney

Law Office 116

571.272.9750

Brittany.Lee-Richardson@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 August 16, 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.”