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 26, 2019

 

 

INTRODUCTION

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must address the following.

 

SUMMARY OF ISSUES:

 

·       Clarification of the Classification and Identification of Goods

·       Multi-class Application Advisory and Requirements

 

CLARIFICATION OF THE CLASSIFICATION AND IDENTIFICATION OF GOODS

 

First, the following goods are misclassified in International Class 019:

 

·       waterproofing membranes in liquid chemical form for use in construction

·       acoustic membranes

·       concrete sealers in the form of a coating

 

The proper classification for each item is as follows:

 

Class 001:  waterproofing membranes in liquid chemical form for use in construction

Class 009:  acoustic membranes

Class 002:  concrete sealers in the form of a coating

 

Additionally, applicant has provided the application fee for only one international class.  Thus, not all international classes in the application are covered by the application fee.  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 class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) 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.

 

Second, the following wording is indefinite and must be clarified to specify the nature of the goods:

 

·       self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces

·       self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection

·       elastomeric waterproofing membrane which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring

·       seam tape can be used for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Third, applicant must clarify the following wording in the identification of goods because it is indefinite and too broad:

 

·       waterproofing membranes for buildings

·       sound control membranes

·       sound abatement membrane

·       primers for membrane systems

·       chemical floor hardener for porous, cementitious substrates

·       pre-formed corners for use in waterproofing (17 or 19

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the nature of the goods.  Further, this wording could identify goods in more than one international class.  For example, “waterproofing membranes for buildings” could be “for foundations of buildings” in Class 017 and “for roofing, floors and walls” in Class 019.  “Sound control membranes” and “sound abatement membranes” could be in the nature of “acoustic membranes” in Class 009” and in the nature of “sound control flooring underlayment” in Class 017.  “Primers for membrane systems” could be in the nature of “adhesive primers” in Class 001 and “paint primers” in Class 002.  “Chemical floor hardener for porous, cementitious substrates” could be in the nature of “chemical additives for accelerating hardening of concrete” in Class 001 and “coatings in the nature of industrial sealants for waterproofing and surface hardening” in Class 002.  “Pre-formed corners for use in waterproofing” could be in the nature of “waterproof sealants” in Class 017 and “waterproofing membranes for roofing, floors and walls” in Class 019.

 

Finally, the identification for “tile installation kits” and “waterproofing kit” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components and clarify the product being made, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 003, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 008, and “printed instructions” in International Class 016 listed after the International Class 003 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 008 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 007 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 033 (the class for “wine”).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

Based on the goods shown on applicant’s website, the examining attorney has provided below suggested edits to the identification of goods.  Applicant may adopt the following identification of goods, if accurate.  Suggested edits are in bold and strikethrough.

 

·       Class 001:  Waterproofing membranes in liquid chemical form for use in construction; adhesive primers for membrane systems for use in the construction industry

 

·       Class 002:  Concrete sealers in the form of a coating; chemical floor hardener for porous, cementitious substrates, namely, coatings in the nature of industrial sealants for waterproofing and surface hardening

 

·       Class 009:  Acoustic membranes; sound control membranes in the nature of acoustic membranes; sound abatement membranes in the nature of acoustic membranes

 

·       Class 017:  Waterproofing membranes for foundations of buildings; sound control membranes in the nature of sound absorbing flooring underlayment; sound abatement membranes in the nature of sound absorbing flooring underlayment

 

·       Class 019:  Flooring underlayment; flooring underlayment, namely, crack isolation membranes; flooring membranes, namely, flooring underlayment; waterproofing membranes for roofing, floors and walls; waterproofing membranes for floors; waterproofing membranes in liquid chemical form for use in construction; acoustic membranes; concrete sealers in the form of a coating; self-adhering ceramic tile, quarry tiles, stone tiles, vinyl tiles, wood tiles, cork tiles and composite non-metal tiles; flooring underlayment, namely, self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces; sound control membranes; sound abatement membrane; flooring underlayment, namely, self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection; elastomeric waterproofing membrane for floors which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring; primers for membrane system; chemical floor hardener for porous, cementitious substrates; waterproofing membranes in the shape of pre-formed corners for roofing, floors and walls; building seam tape can be used for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions; tile installation kits comprised of non-metal tiles, primer, primer brush, and utility knife; waterproofing kit comprised of waterproofing membrane for floors and walls, building seam tape, primer, and polyurethane sealant

 

If applicant adopts the suggested wording above to add international classes, applicant must comply with the multiple-class requirements specified in this Office action below.

 

Scope Advisory

 

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.

 

MULTI-CLASS APPLICATION ADVISORY AND 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 fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in more than one class; however, applicant submitted a fee sufficient for only one class.  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.

 

Fee Advisory

 

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.

 

ASSISTANCE

 

Applicant is encouraged to call or email the assigned attorney below to resolve the issues 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  

 

 

/Julie H. Choe/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 126

(571) 270-3368

julie.choe@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 26, 2019 for

U.S. Trademark Application Serial No. 88503532

 

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. 

 

 

/Julie H. Choe/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 126

(571) 270-3368

julie.choe@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 26, 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.”