| To: | KURIYAMA EUROPE COÖPERATIEF U.A. (volartpons@volartpons.com) |
| Subject: | U.S. Trademark Application Serial No. 88520699 - BLUE DEVIL - N/A |
| Sent: | October 24, 2019 12:39:53 PM |
| Sent As: | ecom102@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. 88520699
Mark: BLUE DEVIL
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Correspondence Address: |
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Applicant: KURIYAMA EUROPE COÖPERATIEF U.A.
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Reference/Docket No. N/A
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: October 24, 2019
SUMMARY OF ISSUES:
1. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (INTERNATIONAL CLASS 9 ONLY)
The Section 2(d) refusal is limited to scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; data processing equipment and computers, in International Class 9. Additional explanation is set forth at the end of this section.
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.
Statement of Facts Specific to this Application:
Applicant has applied to register the mark BLUE DEVIL in standard characters in International Class 8 for “hand tools and implements (hand-operated); cutlery; manual pumps; fire hooks; pliers; shovels” and International Class 9 for “fire-extinguishing apparatus; fire extinguishing apparatus; fire-extinguishing systems; fire control apparatus; hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex; fire hose; safety systems for extinguishing forest fires; fire pumps; fire engines; industrial hoses of extruded plastic for use against fires; fire hose nozzles; fire hose nozzles; fire hose nozzles; fire trucks; protective and safety equipment; clothing for protection against fire; clothing for protection against fire; clothing for protection against accidents; clothing for protection against chemicals; clothing especially made for laboratories; high visibility safety wear; thermal protective aids for protection against accident or injury; fire-resistant gloves and boots; head protection; fire beaters; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; data processing equipment and computers.”
Registrant’s marks are DEVIL in standard characters (U.S. Registration No. 5010657) and a design (U.S. Registration No. 5015568), both in International Class 9 for “computer hardware; computers; computers and computer hardware; supercomputers.”
Comparison 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).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the marks are confusingly similar because of their similarities in sound, connotation, and commercial impression. The word DEVIL is the dominant term for all three marks. It is the only term in registrant’s marks and it is the subject in applicant’s mark. Specifically, in applicant’s mark, the word BLUE is an adjective that describes the word DEVIL, thereby making DEVIL the subject, and therefore the dominant term, in applicant’s mark. BLUE is thereby a term of lesser importance because it is subordinate to DEVIL. As DEVIL in all marks is pronounced the same and has the same connotation and commercial impression, it makes the marks confusingly similar for likelihood of confusion purposes.
Further, the fact that registrant’s mark (U.S. Registration No. 5015568) is a design does not affect the above analysis for that mark as the design is composed of two key elements: the word DEVIL in stylistic font and a stylized devil’s head. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, the design element in applicant’s mark, a stylized devil’s head, only reinforces the commercial impression created by the stylized text DEVIL. Therefore, the fact that registrant’s mark is a design does not obviate the similarities with applicant’s mark.
Because the terms of primary significance in the marks DEVIL and BLUE DEVIL look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods:
In this case, the application uses broad wording to describe its relevant goods as “data processing equipment and computers,” which presumably encompasses all goods of the type described, including registrant’s more narrow “computers; computers and computer hardware; supercomputers.” 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). Thus, applicant’s and registrant’s goods are identical in part. 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.
Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration in International Class 9.
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments;
Data processing equipment and computers
(1) Deleting the goods to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Applicant must also respond to the requirements set forth below.
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).
The identification of goods must be amended because it includes wording that is indefinite, overly broad, duplicative, and/or could be classified in other classes, as further explained below.
Applicant used the following identification in its application:
For International Class 8: Hand tools and implements (hand-operated); Cutlery; Manual pumps; Fire hooks; Pliers; Shovels
For International Class 9: Fire-extinguishing apparatus; Fire extinguishing apparatus; Fire-extinguishing systems; Fire control apparatus; Hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex; Fire hose; Safety systems for extinguishing forest fires; Fire pumps; Fire engines; Industrial hoses of extruded plastic for use against fires; Fire hose nozzles; Fire hose nozzles; Fire hose nozzles; Fire trucks; Protective and safety equipment; Clothing for protection against fire; Clothing for protection against fire; Clothing for protection against accidents; Clothing for protection against chemicals; Clothing especially made for laboratories; high visibility safety wear; Thermal protective aids for protection against accident or injury; Fire-resistant gloves and boots; Head protection; Fire beaters; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin operated apparatus; Data processing equipment and computers
Duplicate Entries: Applicant is advised to delete or modify the duplicate entries in the identification of goods in International Class 9 for “fire extinguishing apparatus,” “fire hose nozzles,” and “clothing for protection against fire.” 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).
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
For amendments to identifications consisting of class headings, the scope of the identification is limited to the ordinary meaning of the words in the heading. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1598 (TTAB 2014); TMEP §§1402.06(a), (b), 1402.07(a). Accordingly, applicant must amend the class heading to identify specific goods that fall within the ordinary meaning of the words specified in the class heading. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a).
Applicant may amend the class heading in the identification to the following, if accurate: “Hand tools and implements, namely hoes and pitchforks.
Indefinite and/or Overbroad IDs: Applicant must clarify the wording “cutlery,” “Manual pumps,” and “fire hooks” in the identification of goods in International Class 8 and “hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex” in International Class 9 because they are indefinite and/or too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “cutlery” could be “table cutlery” or “cutlery, namely, pruning saws” in International Class 8 or “surgical cutlery” in International Class 10. “Manual pumps” could be “Manual pumps, namely, hand-operated pumps” in International Class 8 or “Manually actuated pump dispensers for attachment to containers for use in dispensing liquids” in International Class 21. “Fire hooks” could be “fire hooks for stove and fireplace sets” in International Class 8 or “fire-fighting hand tools, namely, fire hooks” in International Class 9. “Hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex” could be “Fire hoses, namely, hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex” or can simply be “fire hoses” in International Class 9.
In International Class 9, Applicant must clarify the following wording because it is indefinite and/or too broad:
Fire control apparatus (This can be “fire control apparatus, namely, {specify type, i.e., fire pump control valves, etc.}” in International Class 9 or “fire control apparatus, namely, backfire torches containing diesel oil or kerosene and a wick for use in starting backfires to control fires and for controlled burns” in International Class 4).
Safety systems for extinguishing forest fires (This can be “safety systems for extinguishing forest fires, namely, {specify type, i.e., water cannons, fire-extinguishers, etc.}”).
Protective and safety equipment (This can be “protective and safety equipment, namely, {specify type, i.e., protective face-shields for protective helmets, protective helmets, etc.}).
Clothing especially made for laboratories (This can be “protective clothing especially made for laboratories” in International Class 9 or it can be “clothing especially made for laboratories, namely, lab coats” in International Class 25).
High visibility safety wear (This can be “high visibility safety wear, namely, reflective and illuminated clothing for the prevention of accidents” in International Class 9).
Thermal protective aids for protection against accident or injury (This can be “Thermal protective aids for protection against accident or injury, namely, {specify type, i.e., fire-resistant flying suits, fire-resistant protective bags, etc.}).
Head protection (This can be “Head protection, namely, protective head guards for industrial purposes, headgear being protective helmets, etc.}).
Fire beaters (This can be “fire extinguishing apparatus, namely, fire beaters”)
Magnetic data carriers (This must specify if they are “blank magnetic data carriers” or “prerecorded magnetic data carriers featuring {indicate subject matter, i.e., fire-fighting footage, traditional fire-fighter songs, etc.}).
Recording discs (This must specify if it is “blank recording discs” or “prerecorded recording discs featuring {indicate subject matter, i.e., fire-fighting footage, traditional fire-fighter songs, etc.}).
Automatic vending machines and mechanisms for coin operated apparatus (This can be “automatic vending machines and mechanisms for coin-operated apparatus sold as a unit” in International Class 7 or it can be “automatic vending machines” in International Class 7 and/or “mechanisms for coin-operated apparatus” in International Class 9”).
See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03 The above wording is indefinite because it does not make clear what the goods are and/or could identify goods in more than one international class, as explained above.
Regarding the in the identification of goods in International Class 9 for “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments,” applicant must clarify the wording because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “scientific apparatus and instruments” could be “scientific apparatus and instruments, namely, {specify type, i.e., ultra-high vacuum chambers, chromatography columns for use in purification in the laboratory and parts and fittings therefor, etc.}.” “Nautical apparatus and instruments” could be “nautical apparatus and instruments, namely, {specify type, i.e., marine compasses, sextants, etc.}.” “Surveying apparatus and instruments” can be “surveying instruments” or “surveying and measuring apparatus and instruments, namely, {specify type, i.e., level measuring machines for surveying, levelling rods for surveying, etc.}.” “Photographic and cinematographic apparatus and instruments” can be “photographic and cinematographic apparatus and instruments, namely, {specify type, i.e., cameras, cinematographic cameras, flashlamps for cameras, infrared cameras, etc.}” or it can be “cases especially made for photographic and cinematographic apparatus and instruments.” “Optical apparatus and instruments” could be “optical apparatus and instruments, namely, {specify type, i.e., optical receivers, telescopes, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography, etc.,}. “Weighing apparatus and instruments” is a definite identification. “Measuring apparatus and instruments” could be “measuring apparatus and instruments, namely, {specify type, i.e., instruments for measuring length, tool measuring instruments, etc.,}.” “Signaling apparatus and instruments” could be “signaling apparatus and instruments, namely, {specify type, i.e., signal mirrors, emergency signal transmitters, etc.}.” “Checking apparatus and instruments” could be “technical measuring, testing and checking apparatus and instruments for measuring, testing and checking the temperature, pressure, quantity and concentration of gas and liquids, tire pressure gauges, etc.}.” “Lifesaving apparatus and instruments” could be “lifesaving apparatus and instruments, namely, {specify type, lifesaving rafts, etc.} in International Class 9, “lifesaving apparatus and instruments, namely, a power-operated life-saving safety mechanism, namely, a controlled descent device comprised of several descent slowing mechanisms allowing for the regulated descent at a fixed and safe speed, a harness attached at either end of a steel fiber cable, and an assortment of accessories attached thereto” in International Class 7, or “lifesaving apparatus and instruments, namely, defibrillators” in International Class 10. “Teaching apparatus and instruments” could be “teaching apparatus and instruments, namely, {specify type, a transparent tank used as a teaching aid for the chemical process of making alternative fuels, blocks used as teaching aids for modeling chemical compounds etc.}.
Applicant may substitute the following wording, if accurate:
In International Class 4: Fire control apparatus, namely, backfire torches containing diesel oil or kerosene and a wick for use in starting backfires to control fires and for controlled burns
In International Class 7: Automatic vending machines and mechanisms for coin-operated apparatus sold as a unit; Lifesaving apparatus and instruments, namely, a power-operated life-saving safety mechanism, namely, a controlled descent device comprised of several descent slowing mechanisms allowing for the regulated descent at a fixed and safe speed, a harness attached at either end of a steel fiber cable, and an assortment of accessories attached thereto
In International Class 8: Hand tools and implements, namely hoes and pitchforks; Table cutlery; Manual pumps, namely, hand-operated pumps; Fire-fighting hand tools, namely, fire hooks; Pliers; Shovels
In International Class 9: Fire extinguishing apparatus; Fire-extinguishing systems; Fire control apparatus, namely, fire pump control valves; Fire hoses, namely, hoses for use against fires woven from any fibre, with or without interior and/or exterior coverings of plastic or latex; Fire hose; Safety systems for extinguishing forest fires, namely, water cannons; Fire pumps; Fire engines; Industrial hoses of extruded plastic for use against fires; Fire hose nozzles; Fire trucks; Protective and safety equipment, namely, protective face-shields for protective helmets; Clothing for protection against fire; Clothing for protection against accidents; Clothing for protection against chemicals; Protective clothing especially made for laboratories; High visibility safety wear, namely, reflective and illuminated clothing for the prevention of accidents; Thermal protective aids for protection against accident or injury, namely, fire-resistant protective bags; Fire-resistant gloves and boots; Head protection, namely, protective head guards for industrial purposes; Fire extinguishing apparatus, namely, fire beaters; Scientific apparatus and instruments, namely, ultra-high vacuum chambers; nautical apparatus and instruments, namely, marine compasses; surveying instruments; Photographic and cinematographic apparatus and instruments, namely, cameras and cinematographic cameras; Optical apparatus and instruments, namely, telescopes; Weighing apparatus and instruments;” Measuring apparatus and instruments, namely, instruments for measuring length; Signaling apparatus and instruments, namely, emergency signal transmitters; technical measuring, testing and checking apparatus and instruments for measuring, testing and checking the temperature, pressure, quantity and concentration of gas and liquids, tire pressure gauges; Lifesaving apparatus and instruments, namely, lifesaving rafts; Teaching apparatus and instruments, namely, blocks used as teaching aids for modeling chemical compounds; Apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers; Prerecorded recording discs featuring fire-fighting footage; Mechanisms for coin operated apparatus; Data processing equipment and computers;
In International Class 10: surgical cutlery; lifesaving apparatus and instruments, namely, defibrillators
In International Class 21: Manually actuated pump dispensers for attachment to containers for use in dispensing liquids
In International Class 25: Clothing especially made for laboratories, namely, lab coats
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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). 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 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).
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
(1) List the goods 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 7 classes; however, applicant submitted a fees sufficient for only 2 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
For this application to proceed, 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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
Edward Germick
/Edward J. Germick/
Examing Attorney
Law Office 102
(571) 272-5862
edward.germick@uspto.gov
RESPONSE GUIDANCE
