Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  October 08, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

Search Results – No Confusingly Similar Marks Found

 

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 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:

 

• Identification and Classification of Goods Requires Amendment
• Multiple Class Application Requirements
• Identification of Goods in U.S. Application Exceeds Scope of Foreign Registration
• Owner of Foreign Registration Differs

 

Identification and Classification of Goods Requires Amendment

 

The identification of goods is indefinite and must be clarified as indicated below to delete the quotation marks and to properly classify the goods.  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.

 

Commas, semicolons, and apostrophes are the only punctuation that should be included in an identification. Other punctuation, such as colons, question marks, exclamation points, and periods should not be used in an identification. In addition, symbols, such as asterisks (*), at symbols (@), or carets should not be included in the identification.  TMEP §1402.01(a).

 

Applicant may adopt the following wording, if accurate: 

 

International Class 1:  Zinc oxide for industrial purposes, namely, zinc and zinc/aluminum oxide used as a feed stock in non ferrous metal production;

 

International Class 6: Unwrought and partially wrought common metals and their alloys, namely, carbon and alloy steel plate, and hot rolled steel, flat steel in coil and sheet form; cold rolled flat steel in coil and sheet form; flat rolled steel in coil and sheet form, namely, tin plated steel and tin mill blackplate; flat rolled steel in coil and sheet form, namely, zinc coated galvanized steel and zinc/aluminum alloy coated steel; flat rolled steel in coil and sheet form, namely, vitreous enamelling steel; flat rolled steel in coil and sheet form, namely, chromium coated tinfree steel; flat rolled steel in coil and sheet form, namely, zinc/zinc alloy coated steel; flat rolled steel in coil and sheet form, namely, surface textured, roll embossed steel; hot, cold rolled, zinc coated and zinc/aluminum alloy coated steel tubes for use in subsequent forming and fabricating such as automotive frames and the like; cast pig iron; case iron scrap, namely, beach iron, cold iron, runner scrap and ferrous scrap used as a raw material in iron and steel refining processes; solid residue from tin plating composed primarily of tin and used as feed stock in the manufacture of tin plating electrodes

 

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 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 and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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 Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Identification of Goods in U.S. Application Exceeds Scope of Foreign Registration

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods and/or services as follows:  “cast pig iron; case iron scrap, namely, beach iron, cold iron, runner scrap and ferrous scrap used as a raw material in iron and steel refining processes; zinc and zinc/aluminum oxide used as a feed stock in non ferrous metal production; and solid residue from tin plating composed primarily of tin and used as feed stock in the manufacture of tin plating electrodes.” 

 

However, the foreign registration does not include these goods.  These goods in the U.S. application exceed the scope of the goods and/or services in the foreign registration because they are not listed in the foreign registration or encompassed by goods listed in the foreign registration.   Thus, these goods and/or services in the U.S. application are not acceptable and may not be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)       Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

Owner of Foreign Registration Differs

 

Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed solely under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as ArcelorMittal Dofasco Inc., a corporation of Canada, while the foreign registration sets forth the owner as ArcelorMittal Dofasco G.P., which appears to indicate a partnership entity.    Moreover, the foreign registration references an assignment from ArcelorMittal Dofasco Inc. to ArcelorMittal Dofasco G.P. in January 2016.

 

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application.  See TMEP§§1005, 1006.

 

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant will have to amend to an acceptable basis, such as Section 1(a) or 1(b).  See TMEP §§806.03, 1005.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

Response Guidelines

 

Please see “How to respond” section above signature block.  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 refusal(s) and/or requirement(s) 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  

 

 

/Leslie L. Richards/

U.S. Patent and Trademark Office

Trademark Examining Attorney, Law Office 106

571-272-1256

leslie.richards@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 08, 2019 for

U.S. Trademark Application Serial No. 88514980

 

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. 

 

 

/Leslie L. Richards/

U.S. Patent and Trademark Office

Trademark Examining Attorney, Law Office 106

571-272-1256

leslie.richards@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 08, 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.”