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:  March 05, 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 USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods—Amendment Required

 

IDENTIFICATION OF GOODS—AMENDMENT REQUIRED

 

The identification of goods is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 007

 

The wording “Pumps, namely, water pumps for domestic, industrial and agricultural use, for water pressurization, water boosting, water transfer and irrigation” is unacceptable as indefinite because it could include hand pumps in Class 008.  Applicant must amend the wording to specify that the pumps are electrical or motorized or are part of an electrical or motorized system.  See id.  See suggested amendment below.   

 

Class 009

 

The wording “Pumps, namely, water pumps for fire protection and firefighting” is unacceptable as indefinite because it could implicate Class 007 and Class 008 goods.  Applicant must clarify that the goods are in the nature of fire pumps.  See id.  See suggested amendment below.   

 

The wording “safety equipment for firefighting, namely, fire pumps, hoses, nozzles, firefighting foam, fire protective gel, protective clothing for firefighting” is unacceptable as indefinite because it could include goods in other classes. Specifically, applicant must clarify that the hoses and nozzles comprise fire hoses and fire hose nozzles; applicant must reclassify firefighting foam in Class 001, and must clarify the nature of the “fire protective gel,” and, if necessary, reclassify the goods accordingly.  See id.  See suggested amendment below.   

 

SUGGESTED AMENDMENTS

 

Applicant may adopt the following identification, if accurate:

 

Class 001 (added class)

 

Firefighting foam

 

Class 007

 

Pumps, namely, electrical water pumps for domestic, industrial and agricultural use, for water pressurization, water boosting, water transfer and irrigation

 

Class 008 (added class)

 

Pumps, namely, hand-operated water pumps for domestic, industrial and agricultural use, for water pressurization, water boosting, water transfer and irrigation

 

 

Class 009

 

Pumps, namely, water pumps being fire pumps for fire protection and firefighting; safety equipment for firefighting, namely, fire pumps, fire hoses, and fire hose nozzles; fire protective gel being protective gel pad undergarments for protection against fire; protective clothing for firefighting

 

Class 035

 

Retail store services and online retail store services featuring water pumps for fire protection and firefighting, water pumps for domestic, industrial and agricultural use, water pumps for fountains, ponds, water features, and swimming pools, water treatment equipment, namely, water softeners, water filtration systems, and ultraviolet water purification systems, safety equipment, namely, fire pumps, hoses, nozzles, firefighting foam, fire protective gel, protective apparel for firefighting, and firefighting tools

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 001, 007, 008, 009, 035.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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 REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 003: perfume; International Class 018: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least five classes; however, applicant submitted a fee(s) sufficient for only three class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class(es) 007, 009, and 035; and applicant needs a specimen for class(es) 001 and 008.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) 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 this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7).  And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $275 per class (instead of $400) when adding a class.  For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

 

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

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 March 05, 2020 for

U.S. Trademark Application Serial No. 88706268

 

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. 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 March 05, 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.”