Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 13, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 12, 2020.

 

In a previous Office action dated November 15, 2019, the trademark examining attorney required applicant to satisfy the following requirements:  Identification & Classification of Goods, Multiple-Class Application Requirements, Foreign Registration Certificate Required, and Explanation of Mark’s Significance Required.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Foreign Registration Certificate Required and Explanation of Mark’s Significance Required.  See TMEP §§713.02, 714.04. 

 

In addition, the following requirement has been withdrawn:  Multiple-Class Application Requirements.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Goods – FINAL

 

IDENTIFICATION OF GOODS – FINAL

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Applicant was previously required to amend the identification and classification of goods.  In response, applicant satisfied most of the required items; however, some amendments made are still currently indefinite and no proposed language was able to be suggested previously.  Thus, the requirement is made final for the reasons discussed below.

 

The various wording for “building materials”, and specifically the “panels” and “spray applied emulsions”, in the identification of goods is indefinite and must be clarified because the items still need further clarification to make the nature clear for the record.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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 substitute the following wording, 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 metal and nonmetal 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 shape materials not of metal, namely, thermal insulation and incombustibility building materials; refractory cement; refractory mortars; refractory shapes, not of metal; plastic building materials, namely, plastic support BUILDING panels, fixtures, and spray emulsions for thermal insulation, anti condensation, and anti vibration systems; synthetic NON-METAL building materials, namely, thermal insulation, anti condensation, and anti vibration synthetic BUILDING panels and spray applied emulsions FOR THE SAME PURPOSES; asphalt, and asphalt building and construction materials, namely, asphalt paving composition BUILDING panels for thermal insulation, anti condensation; rubber building and construction materials, namely, thermal insulation, anti condensation, and anti vibration rubber BUILDING panels and spray applied emulsions FOR THE SAME PURPOSES; plaster for building purposes; lime building and construction materials; building and construction materials of plaster; agricultural nets for erosion control, namely, rockslide retention nets of textiles for construction materials; refractory cement; fireproof cement coatings; building timber; building stone; plaster boards; road signs, not of metal, non- luminous and non-mechanical

 

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 in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ADVISORY – PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  “Plastic building materials, namely, plastic support panels, fixtures, and spray emulsions for thermal insulation, anti condensation, and anti vibration systems; synthetic building materials, namely, thermal insulation, anti condensation, and anti vibration synthetic panels and spray applied emulsions; asphalt, and asphalt building and construction materials, namely, asphalt paving composition panels for thermal insulation, anti condensation; rubber building and construction materials, namely, thermal insulation, anti condensation, and anti vibration rubber panels and spray applied emulsions” in International Class 19.  The application will then proceed with the following goods only:  “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 metal and nonmetal 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” in International Class 17 and “Refractory foam shape materials not of metal, namely, thermal insulation and incombustibility building materials; refractory cement; refractory mortars; refractory shapes, not of metal; plaster for building purposes; lime building and construction materials; building and construction materials of plaster; agricultural nets for erosion control, namely, rockslide retention nets of textiles for construction materials; refractory cement; fireproof cement coatings; building timber; building stone; plaster boards; road signs, not of metal, non- luminous and non-mechanical” in International Class 19.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSE GUIDELINES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  “Plastic building materials, namely, plastic support panels, fixtures, and spray emulsions for thermal insulation, anti condensation, and anti vibration systems; synthetic building materials, namely, thermal insulation, anti condensation, and anti vibration synthetic panels and spray applied emulsions; asphalt, and asphalt building and construction materials, namely, asphalt paving composition panels for thermal insulation, anti condensation; rubber building and construction materials, namely, thermal insulation, anti condensation, and anti vibration rubber panels and spray applied emulsions” in International Class 19.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only:  “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 metal and nonmetal 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” in International Class 17 and “Refractory foam shape materials not of metal, namely, thermal insulation and incombustibility building materials; refractory cement; refractory mortars; refractory shapes, not of metal; plaster for building purposes; lime building and construction materials; building and construction materials of plaster; agricultural nets for erosion control, namely, rockslide retention nets of textiles for construction materials; refractory cement; fireproof cement coatings; building timber; building stone; plaster boards; road signs, not of metal, non- luminous and non-mechanical” in International Class 19. 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

Cameron McBride

/Cameron McBride/

Examining Attorney - Trademarks

Law Office 106

(571) 272-0542

Cameron.McBride@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 April 13, 2020 for

U.S. Trademark Application Serial No. 88572911

 

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. 

 

 

Cameron McBride

/Cameron McBride/

Examining Attorney - Trademarks

Law Office 106

(571) 272-0542

Cameron.McBride@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 April 13, 2020, 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.”