To: | Maxxon Corporation (ip@fredlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88540605 - MAXXON MULTIFAMILY EZ RENOVATION - N/A |
Sent: | October 24, 2019 11:04:53 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88540605
Mark: MAXXON MULTIFAMILY EZ RENOVATION
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Correspondence Address: 200 SOUTH 6TH STREET, SUITE 4000
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Applicant: Maxxon Corporation
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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
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES applicant must address:
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).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “MULTIFAMILY” and “RENOVATION SYSTEM” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached Internet evidence shows that the term “MULTIFAMILY” refers to “multi-family residential” which “is a classification of housing where multiple separate housing units for residential inhabitants are contained within one building or several buildings within one complex.” The term “RENOVATE” is defined as “to restore to a former better state (as by cleaning, repairing, or rebuilding).” The term “SYSTEM” is defined as “a group of devices or artificial objects … forming a network.”
Applicant’s website shows that its products and services are provided in renovations for multifamily construction. See http://www.maxxon.com/gyp-crete/data (noting that “Gyp-Crete® Floor Underlayment is one of the most efficient fire and sound control products available for multifamily construction … in in apartments, condominiums, townhomes, hotels and motels nationwide and abroad”) and http://www.maxxon.com/project_spotlights/multifamily (listing multifamily construction projects applicant has completed).
Thus, taken together, consumer will view the wording “MULTIFAMILY” and “RENOVATION SYSTEM” as merely describing a quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services—i.e., flooring underlayment and construction services used in renovations of multifamily buildings.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MULTIFAMILY” and “RENOVATION SYSTEM” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION AND CLASSIFICATION OF GOODS & SERVICES
The wording “cementitious floor preparatory compound” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01.
Additionally, applicant has provided the application fee for only 1 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 and/or services accordingly; or (2) deleting from the application the goods and/or services 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.
The following identification of goods and services is suggested, if accurate (changes in bold):
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 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 and/or services that are classified in at least 3 classes; however, applicant submitted a fee 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 a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
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
/Eric Sable/
Trademark Examining Attorney
Law Office 117
571-272-4653
Eric.Sable@uspto.gov
RESPONSE GUIDANCE