To: | PAXXUS, Inc. (docket@vciplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88588504 - EXPONENT - 5620-53 |
Sent: | September 25, 2019 04:44:48 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88588504
Mark: EXPONENT
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Correspondence Address: 150 S WACKER DRIVE, SUITE 1650
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Applicant: PAXXUS, Inc.
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Reference/Docket No. 5620-53
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: September 25, 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.
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 OF GOODS
The entirety of the identification of goods is indefinite as specified further below and must be clarified. See TMEP §1402.01. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
The identification “sealants” is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe or explain the nature of the goods or services using clear and succinct language. See id.
See, in the Manual
001 Automobile cooling system leak sealants
001 Tire puncture sealant
003 Polymer sealant for cleaning, shining and protecting automobile exterior surfaces
004 Petroleum jelly based sealant to prevent groundwater leakage and corrosion prevention for industrial and residential use
005 Dental sealants
006 Sealants made of aluminum for use in packaging and sealing machines
017 Silicone sealants
The use of the sealant must be specific for classification purposes, i.e., specify what the sealant seals, and consult the Manual.
Applicant may adopt the following identification, if accurate:
“Dental sealants,” in Class 5; and
“Silicone sealants” in Class 17.
MULTIPLE CLASSES -- INSUFFICIENT FEES
The application identifies goods and/or services 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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 2 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).
Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
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
/Hanno Rittner/
Examining Attorney
Law Office 119
hanno.rittner@uspto.gov
571-272-7188
RESPONSE GUIDANCE