To: | Sekisui Kagaku Kogyo Kabushiki Kaisha (bassam.ibrahim@bipc.com) |
Subject: | U.S. Trademark Application Serial No. 88572911 - PUXFLAME - 1034347-446 |
Sent: | November 15, 2019 01:04:14 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88572911
Mark: PUXFLAME
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Correspondence Address: BUCHANAN INGERSOLL & ROONEY, PC
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Applicant: Sekisui Kagaku Kogyo Kabushiki Kaisha
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Reference/Docket No. 1034347-446
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: November 15, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION & CLASSIFICATION OF GOODS
For instance, wording such as “building or construction materials” is indefinite, because although the composition of the materials has been stated, the actual specific type of materials must be clarified as well.
Also misclassified appears to be “polyurethane-made plate for construction; polyurethane-made sheet for construction; sealing material for building and construction”; however, the correct class has already been included in the application and thus no additional fee is required.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of goods. If there is wording in the applicant’s version of the identification of goods which
should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard
font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 17: PIPE gaskets; non-metal junctions for pipes; joint packing for metal pipe; electrical insulating materials; rock wool; slag wool for use as a building insulator; plastic semi-worked products in the form of sheets; plastic semi- worked products in the form of plates; plastic semi-worked products in the form of liquid; plastic semi-worked products; rubber, raw or semi-worked; soundproofing materials of rock wool, not for building purposes; rubber seals for jars; non-metal seals for ____________ {specify type of pipe, e.g., metal} pipe connections; resin based sealing materials used for electronic parts and LCD; insulation materials for pipes; POLYURETHANE-MADE PLATE FOR CONSTRUCTION; POLYURETHANE-MADE SHEET FOR CONSTRUCTION; SEALING MATERIAL FOR BUILDING AND CONSTRUCTION; PLASTIC-MADE PIPE JOINTS FOR CONSTRUCTION
International Class 19: Refractory foam SHAPES, not of
metal, NAMELY, IN THE SHAPE OF FOAM; refractory cement; refractory mortars; refractory shapes, not of metal; building materials made of linoleum for fixing
to existing walls or floors; plastic building materials, NAMELY, ____________ {specify common commercial name}; synthetic building materials, NAMELY,
____________ {specify common commercial name}; asphalt, and asphalt building or AND construction materials, NAMELY,
____________ {specify common commercial name}; rubber building or AND construction materials, NAMELY, ____________ {specify
common commercial name}; plaster for building purposes; lime building or AND construction materials; building or
AND construction materials of plaster; AGRICULTURAL NETS FOR EROSION CONTROL, NAMELY, rockslide retention nets of textiles for construction materials;
polyurethane-made plate for construction; polyurethane-made sheet for construction; sealing material for building and construction; refractory cement; fireproof cement
coatings; building timber; building stone; plaster boards; plastic-made joints for construction; road signs, not of metal, non- luminous and non-mechanical
International Class 27: BUILDING MATERIALS MADE OF LINOLEUM FOR FIXING TO EXISTING WALLS OR FLOORS
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.
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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 3 classes; however, applicant submitted 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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The USPTO cannot accept a drawing of the mark if it is not a “substantially exact representation” of the mark as it appears in the foreign application or registration. See 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01. Without knowing what the mark in the foreign registration, it is impossible to determine if the application meets this requirement.
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, the 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.
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
For this application to proceed, applicant must explicitly address each 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. 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
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
RESPONSE GUIDANCE