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:  September 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.

 

Summary of Issues

• Prior Pending Applications
• Indefinite Identification of Goods
• Additional Class Advisory

 

Prior Pending Applications

The filing dates of pending U.S. Application Serial Nos. 88975527 and 88079086 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.

 

Indefinite Identification of Goods

The wording “parts, fittings and accessories for the aforementioned goods” in the identification of goods is indefinite and must be clarified because it is overly broad and may include goods that belong in additional international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must specify the goods or state that they are structural. Applicant may substitute the following wording, if accurate: 

 

 

Class 006:       Tool boxes of metal; tools chests of metal sold empty; pipes and tubes of metal; junctions of metal for tubes being pipes; elbows of metal for tubes being pipes; metal clips for tubes being pipes; metal, wash down spray nozzles for commercial and industrial use; metal nozzle plugs; metal plugs for sealing; locking nut assemblies being metal nuts; structural joint connectors of metal; nails; metal nuts; metal hardware, namely, press rings; screw rings of metal; socket head cap screw of metal; cask stands of metal; wire rope fittings of metal, namely, studs; metal door locks; metal tiles; industrial metal hoses; structural parts, structural fittings and structural accessories for the aforementioned goods;

 

Class 007:       Power drills; pile drivers; power tools, namely, impact drivers; impact wrenches; power operated saws; power saw blades; circular saws; reciprocating saws; power-operated jig saws; table saws; power tools, namely, tile saws; band saws; power tools, namely, abrasive saws; power tools, namely, chop saws; stands for machines in the nature of saws; grinders; power tools, namely, routers; electric rotary hammers; electric demolition hammers; power tools, namely, hammer drills; electrical percussion machine tools in the nature of power-operated percussion hammer drills; electric sanders; power tools, namely, oil pulse impact drivers; power-operated screwdrivers; power tools, namely, screw guns; cordless power-operated nailing guns; power operated mixers; power-operated tile cutter; power-operated planers; power tools, namely, drill presses; power-operated tools, namely, multi-tools for use with interchangeable heads for cutting, sanding, grinding, polishing, sawing, drilling, scraping, driving, fastening and/or hammering; power-operated hammers; power-operated nailing guns; pneumatic brad nailing guns; pneumatic staplers; pneumatic finish nailing guns for cutting or shaping or finishing metals or other materials; pneumatic framers being power-operated frame nailing guns; pneumatic palm nailing guns; pneumatic pinners being power-operated pin nailing guns; pneumatic impact wrenches; compressors for machines; inflators in the nature of power operated inflators; power operated pumps; rivet guns; hoists; electronic and magnetic stud finders; electric arc welders; power-operated sprayers; power-operated polishers; power-operated hand-held plumbing augers; plumbing tools, namely, power operated plumbing snakes and cables; power-operated bolt cutters; electric caulking and hot adhesive guns; rotary tools, namely, rotary pumps, rotary blowers, rotary compressors; industrial robots; cutting bits for power drills; suction cups for maneuvering tiles, marble, granite, and glass; mechanically operated rotary and percussion tools, namely, rotary pumps, rotary blowers, rotary compressors; air blowers in the nature of power operated blowers; vacuum cleaners; pressure washing machines and apparatus; machine parts, namely, surge tanks; electric door openers; hoses for vacuum cleaners; power drill bits; driver bits for power tools; carrying suitcases specially adapted for holding or carrying power tools; specialty holsters adapted for carrying electric drilling and fastening tools; power tools parts, namely, collets; gas welding gun parts, namely, collet bodies; machine parts, namely, couplers of synthetic material; punches being punching machines; stands for machines; diamond cutting bits being bits for diamond-pointed metal-cutting tools; straps specially adapted for attaching to power tools and machinery parts; structural parts, structural fittings and structural accessories for the aforementioned goods;

 

Class 008:       Hand-operated tools, namely, hammers, drills, cutting tools, abrading tools, pliers, spanners, nut drivers, shears, trowels, floats for grout, mortar or cement, tile nippers, trim cutters, cutter bars, grout brushes, tile brushes, tile files, tile sharpening stones, tile spacers, removal tools, tile leveling spacers, tubing cutters, snips, wire strippers, clamps, chisels, sanders, mauls, punches, plumbing augers, saws, saw blades, edgers, screwdrivers, scissors, scrapers, mixing paddles for mixing grout, masonry trowels, concrete edgers, concrete groovers, pole sanders, taping knives, scoring knives, bolt cutters, wrenches, saws; blades for hand saws; hand-operated pumps; hand-powered nailing and staple guns, hand-operated planer; hand-operated circle cutters; hand-operated drywall finishing tools, namely, mud pans, drywall hawks; hand-operated plastering tools, namely, scrapers, trowels, mixing paddles; hand tools for use in the garden, namely, shovels, rakes, forks, post hole diggers; utility knives; blades for utility knives; tool bags; tool belts; tool bags sold filled with tools for attachments to tool belts; tool pouches for attachment to tool belts; structural parts, structural fittings and structural accessories for the aforementioned goods;

 

Class 009:       Battery chargers; batteries; portable power source being portable battery chargers; radios; protective clothing, namely, knee pads, gloves; measuring apparatus and instruments in the nature of tape measures and levels; inspection devices connected to cameras, namely, video camera heads, push rod cables, and couplings for connecting the video camera heads to the push rod cables for internal inspection of pipes; digital multimeters; structural parts, structural fittings and structural accessories for the aforementioned goods; battery charge devices;

 

Class 011:       Portable propane heaters; lighting apparatus, namely, flood lights, flashlights, LED work lights and area lights; electric fans; heat guns; electric hot air guns being heat guns; hot air blowers; portable evaporative air coolers; structural parts, structural fittings and structural accessories for the aforementioned goods;

 

Class 012:       Robotic cars; drones; camera drones; structural parts, structural fittings and structural accessories for the aforementioned goods;

 

Class 021:       Portable coolers, non-electric

 

Applicant’s goods and/or services 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 and/or services or add goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Multiple Class Application:Advisory

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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only six 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.

 

 

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  

 

 

 

Hines, Regina

/Regina C. Hines/

Law Office 114

571-272-9451

Regina.Hines@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 September 30, 2019 for

U.S. Trademark Application Serial No. 88496125

 

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. 

 

 

Hines, Regina

/Regina C. Hines/

Law Office 114

571-272-9451

Regina.Hines@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 September 30, 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.”