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:  December 22, 2020

 

This final Office action responds to applicant’s correspondence dated November 20, 2020.

 

The following refusal(s) and/or requirement(s) has/have been withdrawn, obviated or satisfied: requirement for a signed verification.  TMEP §§713.02, 714.04.

 

The following refusal(s) and/or requirement(s) are now made FINAL for the reasons set forth below. 37 C.F.R. §2.63(b).

 

ACCEPTABLE IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED

 

Applicant has elected to use wording in the proposed amendment to the identification of goods and/or services that is not found in the U.S. Acceptable Identification of Goods and Services Manual.  The wording that applicant has chosen to use instead does not meet the standards set forth in the Manual and is unacceptable.  Specifically, the following underlined wording in the identification of goods and/or services is indefinite and must be clarified as set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The exact nature of the goods and/or services cannot be determined from this wording. 

 

Class 1

Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and parasiticides; adhesives used in industry; cement for repairs, namely, adhesive cement for bonding [Clarify whether for industrial purposes such as use in manufacturing, in Class 1, or some other type potentially in a different class as noted in the ID Manual.]; anti-freeze; coolants; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems [Clarify type as exemplified in the ID Manual, for example, “Radiator additives to prevent rust.”]; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems; chemical preparations for locking screw threads; battery fluid, namely, acidulated water for recharging batteries; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins and diesel exhaust fluid 

 

Class 2 

Paints, varnishes, lacquers; preservatives against rust in the nature of a coating and against deterioration of wood [This amended wording appears to conflate two different types of goods, namely, preservatives that prevent metals from rusting and preservatives that preserve and protect objects made of wood. Clarification as to the nature and purpose of the goods is required as noted in the ID Manual, for instance, “wood preservatives, rust preservatives in the nature of a coating.”]; colorants; mordants used in the manufacturing of coatings [Mordants must be specified with more information about the particular type of mordant as shown in the ID Manual, for example, “mordants for metals” in Class 1. See the ID Manual for additional examples before responding.]; raw natural resins; primers, and paint thinners; metal preservatives in the nature of a coating; coatings in the form of paints for use in the manufacture of vehicles and on parts of vehicles; fireproof cement coatings 

 

Class 4

Industrial oils and greases; lubricants [Clarify type of substance as exemplified in the ID Manual, for instance, lubricants for industrial machinery.”]; diesel oil; anti-seizure lubricating compounds for use on engines; lubricant designed for use in ball and roller bearings and bushings 

 

Class 6

Common metals and their alloys [Clarify type separately, for example, “Common metals and their alloys, unwrought or semi-wrought” and “metal ores.”]; metal building materials [Clarify type of materials as set forth in the previous Office action and as exemplified in the ID Manual, for instance, “Metal building materials, namely, ceiling boards and floor boards”]; ores; non-electric cables and wires of common metal; small items of metal hardware [Clarify type of substance as set forth in the previous Office action and as exemplified in the ID Manual, for instance, “small metal hardware, namely, high security locks and sheet metal plates primarily for the casino and gaming industry.”]; metal containers for storage or transport [Clarify type and purpose as explained in the previous Office action and in the ID Manual, for example, “containers of metal for storage and transport of goods.”]; non-electric cables and wires of common metals; pipes and tubes of metal; metal plugs; metal sealing rings; [Clarify type as explained in the previous Office action and as exemplified in the ID Manual, for instance, “metal seals for {indicate type of pipe} pipe connections.”] metal seals; [See previous comment.] metal tie downs; metal bungs; metal caps for tubing ends; metal closures for containers; metal pipe collars; metal clamps; metal couplings for use with hoses; metal storage tanks; metal drain plugs; metal drawbar pins; metal locking pins; metal snap rings; metallic drain traps and drain caps; metal pipe extensions; metal debris deflectors [Clarify nature of the goods as noted in the previous Office action.]; clad steel plates; metal track hardware, namely, track links, track shoes and track pins; metal chains; metal number plates; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts for land vehicles and machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty, metal hose clamps, and metal hose fittings; metal tool boxes; metal camshafts [Clarify type as explained in the previous Office action and as exemplified in the ID Manual, for instance, “engine camshafts of metal.”]; metal studs [Specify type, for example, “wire rope fittings of metal, namely, threaded studs.”]; metal rod ends [Clarify type of substance as exemplified in the ID Manual, for instance, “metal welding rods.”]; metal rods [See previous comment.]; metal rivets; metal pins [Clarify type of substance as exemplified in the ID Manual, for instance, “metal ball lock pins.”]; metal brackets [Clarify type, for instance, metal wall brackets.]; metal clamps; metal bolts; metal nuts; metal hardware, namely, washers; metal screws; metal fasteners [Clarify type, for instance, “metal threaded fasteners.”]; metal rings [Clarify type, for instance, “Screw rings of metal.”]; metal belts [Clarify type, for example, “Belts of metal for handling loads.”]; metal pulleys [Clarify type of substance as exemplified in the ID Manual, for instance, “metal window pulleys.”; metal hardware, namely, pulleys; metal hardware, namely, springs; metal keys [Clarify type as noted in the ID Manual, for example, “Metal keys for locks.”]; metal Woodruff keys [See previous comment.]; metal clips [Clarify type of substance as exemplified in the ID Manual, for instance, metal cable clips.”]; common metal powders used in manufacturing; metals in foil or powder form for 3D printers

 

Class 9

Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity [The type of goods must be specified using the common commercial names, for example, “Electric voltage transformers.”]; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data [Clarify using the common name for the goods, for example, “Electronic data processing apparatus.”]; recorded and downloadable media, computer software, blank digital or analogue recording and storage media [Clarify type goods and type and function of software as shown in the previous Office action and as exemplified in the ID Manual, for instance, “downloadable educational media, namely, ___ {indicate form of goods, e.g., audio files, video recordings, multimedia files, etc.} featuring ___ {indicate subject matter or field}.”]; computers and computer peripheral devices; fire-extinguishing apparatus; computer software [Specify whether downloadable or non-downloadable and function, as noted in the previous Office action and exemplified in the ID Manual, for instance, downloadable software for ___ {specify function}.]; electric wire, harnessing [Clarify as noted in the previous Office action and exemplified in the ID Manual , for example, “Electric wire harnesses for automobiles.”], gauges [Clarify type as noted in the previous Office action and exemplified in the ID Manual, for instance, micrometer gauges.] and switches; electronic displays [Clarify, for example, “Electronic displays, namely, digital signage.”]; electronic connectors [Clarify whether electric connectors as noted in the ID Manual.], terminals, [Clarify, for example, “Electronic payment terminal.”] and controls; [Clarify, for example, electrical controllers.]; circuit breakers; fuses; leveling rods; reflective mirrors to prevent accidents; power inverters; batteries; electrical parts and fittings for land vehicles, machinery, and equipment, namely, amplifiers for wireless communications, antennas, and batteries; electric relays; control mechanisms for machines, engines, or motors; fuel/air ratio controls for engines [Clarify as noted in the previous Office action using the common commercial name such as those listed in the ID Manual, for example, “Mechanical remote controls for motors.”]; fuel/air ratio controls for engines [See previous comment and clarify using the common commercial name and without the use of a slash, which is impermissibly vague.]; speed governors for machines, engines, and motors; radios; antennas; electric cables; converters [Specify type, for instance, analogue to digital converters.]; speakers; glasses [Specify type, for instance, ski glasses.]; eyeglasses; sunglasses; mobile phone [Clarify whether mobile phones.] and tablets [Clarify whether tablet computers.]; Solar panels for the production of electricity; drones [Misclassified. See Class 12 and the ID Manual.]

 

Class 11

Light lenses [Clarify type as noted in the previous Office action using the common commercial names such as those provided in the ID Manual. Note that lenses for objects such as cameras are generally classified in Class 9.]; machine head lights [See previous comment.]; interior lights [See previous comment.]; machine work lights [Clarify, for example, “LED flood lights and LED work lights for construction settings.”]; light, machine and lamp [Clarify, for example, “LED flood lights and LED work lights for construction settings.”]; light bulbs; head light bulbs; tail light bulbs; vehicle turn signal light bulbs; dashboard light bulbs; electric torches for lighting; lights for vehicles and lamps; reflectors for vehicles; air conditioning apparatus; air conditioning filters; defrosting apparatus for vehicles; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machinery, and earth moving machinery, namely, backup lights for land vehicles; coolant recovery systems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs; LED light bulbs; rear lights for vehicles; valves as part of radiators 

 

Class 17

Flexible pipes, tubes, fittings, hoses, seals, junctions, and rings not of metal [Clarify each as stated in the previous Office action, for example, “Flexible plastic pipes for plumbing purposes.”]; non-metal seals for use on pipe joints and flanges; semi-processed brake lining material; clutch linings; non-metal gaskets for commercial and industrial applications; insulating gloves; rings of rubber or of plastic for use as pipe connection seals; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machines, and earth moving machines, namely, connecting hoses for vehicle radiators; absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids; non-medical adhesive strips [Clarify type as exemplified in the ID Manual, for instance, “Adhesive strips for placement on furniture and in potted plants to deter cats from scratching on furniture or digging in potted plants.”]; snubber seals; [Clarify as stated in the previous Office action using the common commercial name, for example, “O-rings being machine parts for {indicate general types of machines, e.g., sorting machines, packaging machines, etc.}.”]; cylinder seals [Clarify as stated in the previous Office action using the common name, for example, “Cylinder joinings.”]; piston wear rings [Clarify whether piston rings as stated in the previous Office action.]; insulation used for sound suppress and HVAC [Clarify as stated in the previous Office action, for example, “Bark coverings for sound insulation.”]

 

Class 25

Apparel, footwear and headwear, namely, work, sport, dress, casual, children, and infant clothing in the nature of shirts, sweaters, pullovers, jackets, pants, shorts, parkas, vests, and rainwear; headwear; caps being headwear; hats; visors being headwear; knit hats; sun hats; uniforms; one piece jumpsuits; shirts; t-shirts; golf shirts; dress shirts; sport shirts; polo shirts; collared shirts; night shirts; sweatshirts; wind shirts; jumpers; fleece pullovers; pants; dress pants; sport pants; casual pants; jeans; lounge pants; sleep pants; sweatpants; wind pants; fleece jackets; bathing suits; underwear; gloves; ski gloves; mittens; socks; sock liners [Clarify whether shoe liners.]; footwear, namely, shoes, casual shoes; sandals, boots, work boots, sport shoes, hiking shoes, hiking boots; insoles for shoes and boots; belts; leather belts; fabric belts; ties; scarves; bandanas; wrist bands as clothing; bibs not of paper 

 

Class 28

Toys and sporting goods [Specify type as stated in the previous Office action and as noted in the ID Manual, for example, board games.]; toy vehicles and accessories therefor; balls for sports; golf tees, golf tee markers and tins [Clarify type of goods as stated in the previous Office action. Note that tin cans sold empty are classified in Class 6.]; golf divot repair tools; hand grips for golf clubs; golf clubs; golf putters; covers for golf clubs; bats for games; aerodynamic disk for use in playing catching games; corn-hole game sets; corn-hole bags; washer toss games [Clarify type of games as stated in the previous Office action.]; scale model vehicles; scale model kits; toy models; construction site themed play sets [Clarify type of construction sets as stated in the previous Office action.]; playground equipment, namely, sand boxes; baby gyms; swings; toy work tools; toy tool benches; radio controlled toy vehicles; remote controlled toy vehicles; construction toys; ride-on toy vehicles; battery operated ride-on toys; puzzles; kites; role-playing games; board games; dart games; toy blocks; playing cards; balloons; toy cameras; plush toys; plush dice [Clarify whether dice games or an automobile accessory as stated in the previous Office action.]; Christmas ornaments [Clarify whether Christmas tree ornaments as stated in the previous Office action and ID Manual.]; rattles [Clarify whether baby rattles as noted in the ID Manual and as stated in the previous Office action.]; dolls; toy figurines [Specify material as stated in the previous Office action, i.e., whether plastic.]; toys for pets; tricycles for infants [Clarify whether toys as stated in the previous Office action]; scooters [Clarify whether toys as stated in the previous Office action]; toy trains and parts and accessories therefore; train sets [Clarify whether toys as stated in the previous Office action]; toy cars; slot cars [Clarify whether toys as stated in the previous Office action]; slot car sets and parts and accessories therefore [Clarify whether toys and list the primary component(s) of the sets and specify the nature of the accessories as stated in the previous Office action.]; hand-held units for playing electronic games; protective padding for bicycles [Misclassified and indefinite. Safety pads for bicycles are classified in Class 12 as stated in the previous Office action.], skateboards, and scooters [On 01-01-2016, this 01-17-2008 entry was deleted because it is indefinite under Nice 10-2016. The specific type of vehicle scooters should be indicated as stated in the previous Office action, e.g., mobility scooters, motor scooters, water scooters, or push scooters. Toy scooters are classified in Class 28.]; party favor hats; paper party favors; party favors in the nature of small toys or noise makers [Clarify the type without the use of the indefinite word “or” as stated in the previous Office action]; fishing tackle; fishing lines; fishing lures; fishing tackle boxes; hunting game calls; and bird calls 

 

The wording “including” and “or” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant has included a slash and an “or” in the identification of goods and/or services.  However, this character and word are generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  Here, the slash and the word “or” create ambiguity concerning whether one good or another is intended.

 

An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace the slash and the word “or” in the identification of goods, if appropriate, or rewrite the identification using definite and unambiguous language. 

 

Applicant must amend this wording to specify the common commercial or generic name for the goods and/or services.  If there is no common commercial or generic name for the goods and/or services, then applicant must describe the nature of the goods and/or services as well as their main purpose, channels of trade, and the intended consumer(s).  See TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or 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 and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e). 

 

Applicant may find acceptable identification wording by: 1) using the sample wording provided in the Identification Manual for this purpose; 2) researching the Register for wording that has recently been accepted by the Office and is consistent with the current rules governing identifications; 3) using wording that is the common name widely used in the relevant industry or trade; or 4) drafting wording that otherwise complies with the requirements described in the Code of Federal Regulations as exemplified by the entries in the Identification Manual. 

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

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).  The application identifies goods and/or services that are classified in at least 10 classes; however, applicant submitted a fee(s) sufficient for only 9 class.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES FOR FINAL OFFICE ACTIONS

                       

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; 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).

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 December 22, 2020 for

U.S. Trademark Application Serial No. 88683686

 

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. 

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 December 22, 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.”