Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  November 08, 2019

 

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On November 8, 2019, the examining attorney and Courtney Thompson discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES

 

• Identification and Classification of Goods Requirement
• Multiple Class Application Requirement
• Full Line Evidence – ITU Advisory

 

IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT

 

The wording in the identification of goods is indefinite and must be clarified.  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.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording in the identification is indefinite for the following reasons:

 

“Rollaway tool cabinets,” is indefinite as Applicant must specify the composition of the tool cabinet.

 

The tools listed must be further detailed to identify the type and purpose.  Machine tools and power-operated tools are generally classified in International Class 7; e.g., “power-operated tools, namely, buffers;” “pneumatic hammers;” “electric nail pullers;” and “machine tools for breaking up road surface material.”  Hand-operated tools are generally classified in International Class 8; e.g., “hand-operated cutting tools,” “pliers,” “manually-operated jacks,” and “hand tools, namely, socket wrenches.”  However, certain power-operated hand tools, such as “electric razors” and “electric hair clippers” are also classified in International Class 8.  Additionally, medical, dentistry, and veterinary tools are classified in International Class 10; e.g., “dental picks” and “medical cutting devices.”  Also, certain hand-operated tools, such as “corkscrews” and “flour sifters” are classified in International Class 21 as kitchen or household utensils, and certain hand-operated tools, such as “divot repair tools for golfers” are classified in International Class 28 as sporting articles.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 006:  Metal tool boxes; metal tool cases; metal tool chests; tool chests of metal

 

Class 007: power tools, namely, table saws, miter saws, drill presses, belt and disk electric sanders, cordless drills, and jig saws; power operated auto devices, namely, DC air compressors; power tools, namely, drills, and screwdrivers; pneumatic tools, namely, impact wrenches; full line of power tools and attachments therefore for home, workshop, yard, automotive and industrial use; a full line of gasoline and electric powered lawn and garden tools for home and commercial use; lawn and garden equipment, namely, power sprayer washers, power edgers, power trimmers and edger-trimmers, power blowers; gasoline powered chain saws; orbital electric sanders, rotary electric sanders; power drills; electrical drills; electric generators; snow throwers; air compressors; paint sprayers; paint spray guns; electric hammers; electric hand drills; Gas-operated power generators; wet-dry vacuums; Non-motorized walk-behind reel-type lawn mower

 

Class 008:   hand tools, namely, screwdrivers and screwdriver bit sets, wrenches, sockets and socket sets, and pliers, vises, hammers, chisels, Punching presses for metalworking, saws, hack saws, hex keys, wrenches, pocket knives, clamps, drill bits for hand tools, socket sets, impact sockets wrenches, lug wrenches; full line of manually operated tools and attachments therefore for home, workshop, yard, automotive and industrial use; utility knives; shovels; pliers; wire strippers; hex key wrenches;

 

Class 009:  level indicators; measuring tapes; batteries; battery chargers;

 

Class 011:  window and portable air conditioners; utility electric fans; dehumidifiers

 

Class 018:  tool bags sold empty;

 

Class 020: rollaway tool cabinets; tool chests not of metal

 

Applicant must amend the application to classify the goods in the International Classes shown above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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 REQUIREMENT

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 7 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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.

 

FULL LINE EVIDENCE – ITU ADVISORY

 

The application indicates applicant is using its mark on a “full line” of tools.  Because full line marks are used on such a large number and/or variety of goods, applicant will be required to provide evidence of that use when applicant files an amendment to allege use or statement of use.  TMEP §1402.03(c); see 37 C.F.R. §2.61(b).  Applicant may provide evidence of such use by submitting product catalogs or similar evidence, advertising and promotional materials and webpages showing broad use of the mark for a majority of the goods in the “full line.”  See TMEP §1402.03(c). 

 

Failure to establish sufficient broad use may result in refusal of registration.  See In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1999) (use of the mark on only three products was insufficient to show use for a “full line” of products); TMEP §1402.03(c).  If applicant does not provide such evidence, applicant will be required to amend the identification to (1) delete “full line of” and (2) specify the common commercial or generic name for each good, if not already specified.  TMEP §1402.03(c).  If applicant is providing a full line of a subset of a genre of goods or services, applicant will be able to amend applicant’s identification to indicate that subset (e.g., a full line of sports clothing).

 

 

TELEPHONE OR EMAIL FOR CLARIFICATION

 

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. 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.

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.  

 

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 November 08, 2019 for

U.S. Trademark Application Serial No. 88574714

 

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. 

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@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 November 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.”