| To: | DURABOND PRODUCTS LIMITED (dwong@btlaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88508058 - DUREX - DURAB-PEND |
| Sent: | September 27, 2019 03:20:07 PM |
| Sent As: | ecom113@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88508058
Mark: DUREX
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Correspondence Address:
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Applicant: DURABOND PRODUCTS LIMITED
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Reference/Docket No. DURAB-PEND
Correspondence Email Address: |
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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 27, 2019
ADVISORY – SUPPLEMENTAL SEARCH OF OFFICE’S DATABASE WILL BE CONDUCTED
The trademark examining attorney has searched the Office’s database of registered and pending marks. However, applicant’s identification of goods is so overbroad and indefinite that the examining attorney will conduct a supplemental search of the register with respect to likelihood of confusion under Trademark Act Section 2(d) once applicant clarifies the nature of its goods and services. TMEP §704.02; see 15 U.S.C. §1052(d). Accordingly, additional refusals may issue at that time. TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(D) – LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1107751, 2669475, and 3039455. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied to register the mark DUREX for use in connection with “exterior insulation; exterior insulation finish, exterior insulation finish systems, drain exterior insulation; stucco products, coatings comprised of stucco, lathe and stucco products; air barrier products; protective air barriers, vapor barriers, moisture protection products, plaster accessories, base coats, stain repellants; exterior paint; decorative coatings, concrete restoration products, protective coatings for concrete and masonry, admixtures, industrial flooring systems” in Class 02.
Registration No 1107751 is for the mark DUREX for use in connection with “lining and protective surfacing materials such as chute linings and hopper linings constructed of plastic and elastomer materials and sold in rollform, screens and parts therefor having elastomer bodies for classifying and sifting hard fragmented materials” in Class 17.
Registration No 2669475 is for the mark DUREX MASTER for use in connection with “latex paint for interior and exterior use” in Class 02.
Registration No 3039455 is for the mark DUREX for use in connection with “Roofing Materials, namely, asphalt and elastomeric roof coverings” in Class 19.
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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin's Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b). Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Here, applicant’s mark, DUREX, is confusingly similar to the registered marks, DUREX, DUREX, and DUREX MASTER.
Similarly, the dominant term DUREX of DUREX MASTER is identical in appearance, sound, and meaning with applicant’s mark. In re i.am.symbolic, llc, 116 USPQ2d at 1411, aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). As the dominant terms of each mark is identical and likely to engender the same overall and commercial impression, see id., these marks are also confusingly similar.
While the registered mark DUREX MASTER contains the additional term MASTER, this does obviate the similarity between the marks. DUREX MASTER begins with the term DUREX. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Accordingly, consumers encountering DUREX MASTER would rely on the dominant first term DUREX, not MASTER, when calling for and recalling the mark. Thus the addition of MASTER does not obviate the confusing similarity of the marks.
Ultimately, when purchasers call for the goods of applicant and registrants using DUREX, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, as described in more detail below, applicant includes numerous overbroad and indefinite goods that could span the gamut of construction-related classes. See Identification of Goods and Services Overbroad and Indefinite, infra. As is clear from those entries, applicant offers “exterior paint,” numerous types of insulation material (whose form is unknown), and various types of construction materials. See id.
As an initial matter, the broad wording of Registration No 2669475’s identification, “latex paint for interior and exterior use,” necessarily includes applicant’s “exterior paint.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). As applicant’s goods are subsumed within registrant’s goods, those goods are 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)).
In regards to the other registrants, applicant’s overbroad language includes numerous construction, sealant, and insulation items such as protective coatings, decorative coatings, insulation systems, air and vapor barriers, and more. This language could necessarily include the “Lining and protective surfacing materials” identified in Registration No. 1107751 (which could include almost any and all lining and protective surfacing materials) and include “asphalt and elastomeric” coverings for use on roofs in Registration No. 3039455. See, e.g., In re Solid State Design Inc., 125 USPQ2d at 1412-15; Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d at 1025. Put simply, applicant’s broad coverings, sealants, insulation, and other materials could necessarily include, and be covered by, the broad items identified by the registrants. Accordingly, the parties’ goods are 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)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Overall when purchasers encounter the virtually identical marks and legally identical goods of applicant and registrants in the same trade channels, they are likely to be confused as to the source of the goods by the relationship between them. Thus, the goods are closely related.
Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) – Likelihood of Confusion Refusal
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
REQUIREMENTS
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements:
REQUEST FOR INFORMATION – FOREIGN APPLICATION OR REGISTRATION REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
IDENTIFICATION OF GOODS OVERBROAD AND INDEFINITE – AMENDMENT REQUIRED
As an initial matter, applicant appears to use commas and semicolons interchangeably throughout its application, resulting in syntactic ambiguity. In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. Applicant should clearly identify which goods it intends to have as separate distinct categories of goods, and which goods are series of related items within a particular category of goods.
The wording “exterior insulation” in the identification of goods is indefinite and 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. In particular, this wording could encompass various acrylic, silicone, and other coatings used for insulation purposes in Class 02, or it could refer to various types of exterior building insulation in Class 17. Applicant must specify the nature of the insulation it identifies. If applicant intends to offer building insulation, applicant must also specify the type of insulation (e.g. wall, flooring, or roof) and the material of the insulation (e.g. fiberglass, glass wool, etc.).
The wording “exterior insulation finish, exterior insulation finish systems, drain exterior insulation” in the identification of goods is indefinite and 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. As an initial matter, it is unclear whether this is a specific single item or whether applicant identifies three separate items. As such, it is unclear to what this wording refers. To the extent it identifies an insulation finishing product in Class 02, applicant must further specify the type of finish (acrylic, silicone, etc.) and the insulation materials over which the finish is to be used. If applicant identifies specific building insulation in Class 17, applicant must specifically identify the nature and type of insulation it offers.
Moreover, applicant identifies insulation systems. The wording “systems” does not make clear the nature of the systems or the goods included therein. For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7. Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
The wording “stucco products, coatings comprised of stucco, lathe and stucco products” in the identification of goods is indefinite and 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. Put simply, “stucco products” could refer to any number of stucco related items, be they coatings to be applied over stucco in Class 02 or stucco tiles and building materials in Class 19. Additionally, the wording “lathe . . . products” is unclear. It is unclear whether applicant means “laths” (categorized by material in Class 06 for metal laths or Class 19 for non-metal laths), or whether applicant means “lathes” (a power tool categorized in Class 07). Applicant must clarify the nature of the stucco products and the nature of the “lathe.”
The wording “air barrier products” and “protective air barriers, vapor barriers” in the identification of goods is indefinite and 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. The word “barrier,” in particular, is indefinite and can describe numerous types of goods in various classes. This could refer to various physical membranes and sheaths in Class 19 used as barriers in construction, it could refer to liquid barriers against air and moisture used in construction in Class 02, or potentially any other type of barrier that either uses or repels air. Applicant must specify the nature of these products and the type of barrier offered (be it a membrane or liquid).
Similarly, the wording “moisture protection products” in the identification of goods is indefinite and 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. This wording could include any number of products used to protect from moisture exposure, be they dessicants for absorbing moisture in Class 01, Concrete moisture barrier coating in Class 02, Polyurethane film for use as a moisture barrier in Class 17, or even moisture-wicking clothing in Class 25.
The wording “plaster accessories” in the identification of goods is indefinite and 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. This could refer to almost any type of plaster related good, be it decorative coatings for use on plaster in Class 02, insulating plaster in Class 17, plaster for construction in Class 19, or statues of plaster. Applicant must clarify the nature and type of plaster it offers.
The wording “base coats” in the identification of goods is indefinite and 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. It is unclear precisely what kind of coating applicant is referring to – it may refer to base coats of stain repellants in Class 01, base coats of paint in Class 02, base coats of wax in Class 03, or some other base coating material. Applicant must specify the nature of the “base coats.”
The wording “stain repellants” in the identification of goods is indefinite and 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. Stain repellants are typically Classified in Class 01, however it is possible, based on the syntax of the entry, that applicant refers to some sort of protective barrier with stain, water, and air repellant properties. Such barriers would be in Class 02 (for a liquid coating) or Class 19 (for non-metal building material). Applicant must specify the nature of the stain repellants and, if not Classified in Class 01, their composition and form.
The wording “decorative coatings” in the identification of goods is indefinite and 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. Decorative coating could refer to almost any kind of coating, for example chemical coatings in Class 01, paint and similar coatings in Class 02, wax coatings in Class 03. Additionally, the use of the coating must be specified – “coatings” in any class could be used on a wide varieties of surfaces. Accordingly, applicant must specify the nature and use of the “decorative coatings”
The wording “concrete restoration products” in the identification of goods is indefinite and 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. Again, applicant has used an overbroad term “products” to describe anything remotely related to concrete restoration, be it reinforcing materials in Class 06 (metal) or 19 (non-metal), concrete preservative chemicals in Class 001, or concrete epoxy and other curable coatings in Class 02. Applicant must specify the nature and type of coating it offers.
Similarly, the wording “protective coatings for concrete and masonry” in the identification of goods is indefinite and 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. This could include chemical coatings in Class 01, wax coatings in Class 03, or paint and oil related coatings in Class 02. Applicant must specify the nature and type of protective coatings it offers.
The wording “admixtures” in the identification of goods is indefinite and 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. The unclear syntax of applicant’s goods renders it unclear whether this refers to concrete admixtures in Class 02, or whether it refers to any number of other mixtures (e.g., chemical mixtures for industry in Class 01, cosmetic chemical mixtures in Class 03, or pharmaceutical mixtures in Class 05). Applicant must specify the nature and type of admixtures if offers.
Similarly, the wording “industrial flooring systems” in the identification of goods is indefinite and 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. As explained above, the term “systems” is overbroad because it can refer to any number of different goods (such as floor paints, varnishes, and topcoats in Class 02, floor wax in Class 03, metal floor tiles in Class 06, floor insulation in Class 17, or non-metal floor tiling in Class 19). Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
Most of the indefinite and overbroad language in applicant’s identification is due to the inclusion of broad indefinite language (e.g. “products” and “systems”) and unclear syntax. Upon reviewing the application and applicant’s co-pending applications, the trademark examining attorney is limiting his suggestions as follows. Should applicant intend to identify other goods, applicant should amend the identification accordingly and comply with the scope and multiple-class advisories below. Applicant may substitute the following wording, if accurate (amended language in bold):
Class 01: Stain repellants; Concrete restoration products, namely, concrete additives; Concrete admixtures
Class 02: Exterior insulation finish, namely, coatings in the nature of a {specify type of finish, e.g., acrylic, silicone, etc.} finish to be applied over cement, stucco, or exterior insulation finishing systems; Stucco products, namely, coatings in the nature of an acrylic finish to be applied over stucco; coatings comprised of stucco; liquid air barriers, namely, {specify nature of coatings, e.g. acrylic, silicone, etc.} coatings to prevent air penetration for use in construction; liquid vapor barriers, namely, {specify nature of coatings, e.g. acrylic, silicone, etc.} coatings to prevent air penetration for use in construction; concrete moisture barrier coating; paints for base coats; exterior paint; Decorative Coatings for masonry blocks and monolithic walls, namely, coatings comprised of cement synthetic plasters; Concrete restoration products, namely, {specify type of coating, e.g. elastomeric, epoxy, radiation curable} coatings for concrete; industrial flooring systems, namely, {specify type of coatings in Class 02, e.g., paint, protective varnishes, etc.} for {specify purpose, e.g., preventing rust, preventing erosion, etc.}
Class 06: Metal laths; industrial flooring systems, namely, metal floor tiles for {specify purpose, e.g., use in construction, use in renovation, use as temporary flooring during renovation, etc.}
Class 17: exterior {specify type of insulation, e.g. fiberglass, glass wool, polyurethane film, plastic fabric, etc.} insulation for buildings
Class 19: Stucco products, namely {specify type of stucco product, e.g. stucco tiles, low-fired strength-fused silica decorative stucco overlays, etc.}; non-metal laths; air barrier membranes, namely, {specify type of membranes, e.g. plastic sheets, polyurethane membranes, etc.} for use in construction; vapor barrier membranes, namely, {specify type of membranes, e.g. plastic sheets, polyurethane membranes, etc.} for use in construction; polyurethane film for use as a moisture barrier; industrial flooring systems, namely, non-metal floor tiles for {specify purpose, e.g., use in construction, use in renovation, use as temporary flooring during renovation, etc.}
TMEP §1402.01
Advisory – Application May Not Exceed Scope of the Foreign Application
Applicant may amend the identification to clarify or limit the goods, 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 may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b). If applicant’s goods exceed the goods identified in the foreign application, applicant must either 1) delete or amend those goods to be within the scope of the foreign application or 2) delete its Section 44 basis and rely solely on its Section 1 basis.
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
The application identifies goods that could be classified in at least 9 classes; however, applicant submitted fees sufficient for 1 class ONLY. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY – MULTIPLE CLASS APPLICATION REQUIREMENTS FOR APPLICATIONS BASED ON SECTION 1(b) and 44
(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).
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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
REQUEST FOR INFORMATION – BAR CREDENTIALS REQUIRED
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and 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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action
/Hunter Bayliss/
Examining Attorney
Law Office 113
571-272-6526
Hunter.Bayliss@USPTO.gov
RESPONSE GUIDANCE
