Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  January 16, 2020

 

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 USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Pending Conflicting Application – Class 11 Only
• Amend Identification of Goods

 

 

 

 

 

 

 

PRIOR-FILED APPLICATION INTERNATIONAL CLASS 11 ONLY

 

The filing date of pending U.S. Application Serial No. 88/074277 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS

 

The identification of goods in International Classes 6, 7, 8, 9, 10 and 21 is indefinite and must be clarified because the locks in classes 6 and 7 must be more specifically identified by and and/or composition to allow for proper classification. Further, the “wood chippers” must be more specifically identified by type and the “axes” and “sledgehammers” should be re-classified in International Class 8. The goods in International Class 8 consisting of “knives”, “automotive repair tools” and “trimmers and edgers” must be more specifically identified by type to allow for proper classification. The “tillers” and “cultivators” must be more specifically identified to indicate “hand operated” for proper classification. The “laser” devices and once again the “locks” in International Class 9 must be more specifically identified by type and/or use or purpose to allow for proper classification. The goods identified as “emergency response repair kits” in International Class 10 must indicate what the kits are comprised of to allow for proper Classification. Finally, applicant must delete the wording “thermoses” in International Class 21 as the term THERMOS® is a registered trademark.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt the following identification in International Classes 6, 7, 8, 9, 10 and 21, if accurate:  Tool chests of metal, empty; tools chests of metal sold empty; metal tool boxes, tool boxes of metal; tool boxes of metal, empty; tools chests of metal sold empty; tool accessory boxes made of metal sold empty and parts and fittings therefor; jobsite storage, namely, metal storage sheds; metal clamps; metal storage, namely, general purpose metal storage units, general purpose metal storage containers, general purpose metal storage bins, metal storage boxes for general use; metal locks, namely, door locks, pad locks, metal locks for doors, windows, desks, metal multi-point locking system in a wood door; safes, namely, electronic safes, metal safes, gun safes, metal fire resistant safes, non-metal safes, safe deposit boxes in International Class 6;

 

 Machine tools, namely, clamps for use in the precision clamping of work pieces; generators, namely, DC generators, electrostatic generators, current generators, electricity generators, solar-powered electricity generators, gas-operated power generators, AC generators, wind-powered electricity generators, emergency power generators, high-voltage generators, portable electric power generators, electric power generators for indoor use, electric power generators using geothermal power, electric power generators using waste heat, electric generators and related equipment, namely, automatic standby electric generator sets; motorized locks, namely, door locks, door pad locks; tarps, namely, fitted tarps for power machinery, welders, namely, electric arc welders, shovels, namely, mechanical shovel, power shovel; power lawn and garden tools, namely, wood chippers; pressure washers, namely, high pressure washers, multi-purpose high pressure washers in International Class 7;

 

striking tools, namely, axes, sledgehammers; Hand tools, namely, screwdrivers, pliers, household knives, pruners, shovels; rakes, namely, hand-operated lawn rakes, sand trap rakes, golf course rakes; hoes, namely, hand-operated hoes, weeding hoes; knives, namely, utility knives, working knives; gardening tools, namely, trowels, weeding forks, spades; compressors, namely, hand-operated automotive repair tools, namely, ring compressors, valve spring compressors; hand operated lawn trimmers and edgers; hand-operated garden tillers and lawn and garden tools, namely, cultivators in International Class 8;

 

Measuring rulers; tape rulers; graduated rulers for measuring; safety vests, namely, reflective safety vests; fall protection equipment, namely, bars, anchors, harnesses, lines, lanyards, carabiners and anchorage connectors; a modular impact cushioning system consisting of soft-fall bags and fall-arrest bags; safety equipment, namely, a lifeline system for horizontal or vertical movement to which a worker is attached for protection against fall hazards, composed of line tension indicator, turnbuckle, bars, anchors, harnesses, lanyards, cables, anchorage connectors, carabiners, lifelines, stanchions, or shock absorber; protective clothing, namely, disposable garment for protection against spontaneous flash in industrial and manufacturing environments; traffic safety supplies, namely, safety traffic cones; laser measuring and leveling devices, namely, line lasers, laser level indicators, cross line lasers and beam line lasers; electric locks, namely, door locks, pad locks, digital door locks, biometric fingerprint door locks; docks, namely, electronic docking stations, computer docking stations; phone cases, namely, cases for mobile phones, mobile phone straps, cell phone covers, carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, cell phones, MP3 players, personal digital assistants; adaptors, namely, electrical adapters, computer card adapter, computer network adapters, flash card adapters, plug adaptors, electric adapter cables, power adapters, wireless adapters for computers in International Class 9;

 

Respiratory masks for artificial respiration; emergency response kits comprised of [indicate specific items by common commercial name]; hearing protectors without the ability to reproduce or transmit sound in International Class 10;

 

Tool bucket organizer, namely, an organizer specially adapted for affixation to a bucket for holding tools and other apparatus; work gloves; gardening gloves; light duty utility gloves; gloves for household purposes; and non-electric portable coolers and thermoses in International Class 21.

 

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.

 

The identification of goods in International Classes 5, 11, 12, 14, 16, 17, 18, 19, 20, 22 and 26 are definite as filed and will require no further amendments.

 

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. 

 

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.    

 

 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquiries only)

 

 

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 January 16, 2020 for

U.S. Trademark Application Serial No. 88683404

 

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. 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquirie

 

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 January 16, 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.”