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 17, 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.

 

SUMMARY OF ISSUES:

 

·       Classification and Identification of Goods and Services

·       Mark Description Referencing Color Needed

 

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.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND/OR SERVICES

 

The wording in International Class 007 is acceptable as written.

 

The identification of goods and/or services is indefinite and must be clarified because it could include goods and/or services in other international classes.  See TMEP §1402.01.  In addition, it appears that some of the goods and/or services are misclassified. Notations concerning unacceptable wording are specified in the suggestion below.

 

For example, applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. 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.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following wording, if accurate:  

 

International Class 002: Paints; coatings, namely, stains, primers, CONCRETE sealers, varnishes, clear finishes, and colored stains for exterior and interior use on a variety of substrates; paints, primers, _______{specify type, e.g., paint, glass} sealers, COATINGS IN THE NATURE OF stains, clear _______{specify type, e.g., wood floor} finishes and colored COATINGS IN THE NATURE OF stains for non-metal building materials, polymer composite materials, fiber cement materials, and fiberglass materials; paints, primers, _______{specify type, e.g., paint, glass} sealers, COATINGS IN THE NATURE OF stains, and clear_______{specify type, e.g., wood floor} finishes, pre-applied on building and construction products

 

International Class 006: Metal building flashing; metal fasteners, namely, bolts, nails, nuts, rivets, screws, and ballistic fasteners IN THE NATURE OF _______{clarify common commercial name}; metal trim for buildings; metal building materials, namely, metal tab fasteners IN THE NATURE OF _______{clarify common commercial name} for attaching building and construction products; metal building materials, namely, steel furrings, furring channels and furring strips {indicate specific Class 6 materials and/or specific use or purpose for each item, e.g., for ceiling support}; metal threaded fasteners

 

International Class 007: Blades for power tools; power saw blades; dry cutting power saw blades for engineered cement composite building materials

 

International Class 008: Score and scrap _______{specify type, e.g., scaling, utility, pocket} knives; cement and backerboard scoring knives FOR VENEER SHEETS; hand-operated cutting tools

 

International Class 017: Non-woven, non-perforated polyolefin VAPOR barriers used in the construction industry as a water vapor barrier, moisture barrier, and air infiltration barrier to protect and cover building structures; weatherizing membranes and vapor barrier; plastic sheeting used in the construction industry as a vapor barrier; laminated vapor barrier; Sheets of plastic fabric used as an insulating infiltration barrier in building construction; building insulation; waterproofing membranes for foundations of buildings; non-metal weather strips for buildings; caulking materials; waterproof sealants; sealants for buildings; adhesive waterproof tape, other than stationery and not for medical or household purposes; waterproof duct tape and waterproof wallboard joint tape; adhesive tape for industrial and commercial use

 

International Class 019: Non-metal construction materials, namely, trim, _______{specify type, e.g., wood} boards, _______{specify type, e.g., floor} panels, soffits, fascia, planks, siding, cladding, and _______{specify type, e.g., flooring} underlayment; non-metal construction materials, namely, trim, _______{specify type, e.g., wood} boards, _______{specify type, e.g., floor} panels, soffits, fascia, planks, siding, and cladding having pre-applied finish coatings, paint coatings, or stain coatings; non-metal underlayment and cement composite boards for flooring, countertops, walls and ceilings BEING NON-METAL BUILDING MATERIALS; non-metal water and moisture resistant underlayment IN THE NATURE OF BOARDS AND PANELS for CONSTRUCTION, IN PARTICULAR FOR flooring, countertops, walls, and ceiling; non-metal building and construction material, namely, fiber cement, polymer composite, and engineered cement composite trim, _______{specify type, e.g., floor} boards, panels, soffits, fascia, planks, siding, cladding, and FLOORING underlayment; non-metal architectural mouldings and finish trim; non-metal building flashing; non-metal roof flashing; seam tape for building; tape, namely, BUILDING seam tape, which is made out of polypropylene coated with an adhesive and used to join barrier materials and cover wall, attic, and other areas of outside building structures; environmental control barriers, namely, fabric wall systems used for environmental separation and containment in industrial and commercial applications; waterproofing membranes for roofing, floors and walls; waterproof membrane for use as a floor underlayment

 

International Class 035: Advertising, marketing and promotion services; promoting the sale of building and construction products OF OTHERS through the distribution of printed promotional materials of others, by providing hypertext links to the websites of dealers, suppliers and distributors of building and construction products, by preparation of custom advertisements and custom promotional products in the nature of branded apparel of others, and by providing sales promotion consultation; advertising, marketing, and promotional services in the nature of PROVIDING an online web SITE portal that connects BUYER customers to the SELLER services of others; electronic commerce services, namely, providing information online about products and services for advertising and sales purposes; business advisory services and consultancy related to the selection and purchase of goods; online retail store services featuring building and construction materials, apparel, banners, signage, and custom-made marketing and promotional goods for businesses; providing cooperative advertising and marketing services for suppliers and distributors of building and construction products, for contractor services, and for home and commercial construction services; providing a website and online COMMERCIAL INFORMATION directory ON THE INTERNET consisting of advertisements and marketing information for use by dealers, suppliers, distributors and installers of building and construction products; PROVIDING consumer information IN THE FIELD OF concerning building and construction provided online; online ordering services, namely, providing a website for builders, contractors and construction sales professionals for placing orders and tracking the status of orders in the field of building and construction products and materials and tools; conducting EMPLOYEE incentive award program to promote excellent service and performance in the fields of contracting AND home and commercial construction; conducting EMPLOYEE incentive award programs to promote the sale of building and construction materials; incentive awards services for commercial, promotional, and/or advertising purposes in the nature of PROMOTING THE GOODS AND SERVICES OF OTHERS BY MEANS OF A recognition of preferred customers and member businesses PROGRAM FEATURING ______{indicate elements of incentive award program} through affiliation with a preferred program; MEMBERSHIP CLUB SERVICES, NAMELY, PROVIDING ON-LINE information provided to member businesses of a membership club in the fieldS of advertising and marketing AND BUSINESS DEVELOPMENT IN THE NATURE OF business growth AND sales generation, and providing advertising SERVICES for member businesses on distribution lists and websites; PROVIDING consumer product information services provided via customer support services and help desk services regarding the selection and purchase of building and construction materials; business _______{specify type, e.g., organization} consulting services, namely, one-on-one business support services provided via telephone or online; providing CONSUMER PRODUCT information VIA THE INTERNET to customers regarding selection, purchase and installation of building and construction products; business support services in the nature of business _______{specify type, e.g., organization} consulting services related to building and construction products and services; providing business information provided to businesses within a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising SERVICES for member businesses on distribution lists, websites and social media; providing a website featuring information on colors, paints, color analysis, color coordination, and color selection; providing business _______{specify type, e.g., development} services to professionals in the building and construction industry relating to color analysis, color coordination and color selection for paints and for building and construction products; PROMOTING THE GOODS AND SERVICES OF OTHERS BY MEANS OF A PREFERRED CUSTOMER promotional program that provides customers with benefits and warranties for the purchase of building and construction products; home warranty services, namely, arranging for repairs and replacement of home building products and home exteriors PROVIDED BY OTHERS PURSUANT TO SERVICE AGREEMENTS

 

International Class 037: Building construction, remodeling and repair; construction planning services; installation services for wallboards, siding, roofing, and walls; consultation in the field of construction, maintenance and renovation of REAL property; consultation in the field of installation, maintenance, and repair of wallboards, siding, roofing, and walls; maintenance and renovation of REAL property; PROVIDING AN INTERNET website THAT FEATURES providing information on building construction, construction planning, and _______{specify type, e.g., building} renovation; building construction information provided online; PROVIDING CONSTRUCTION information provided to member businesses in a membership club in the field of construction, namely, regarding installation best practices for home and commercial contracting and construction services; customer support services for dealers, distributors, builders and other trade professionals for answering questions related to product information, product installation, and providing installation guidance and support services in the field of building and construction, ALL BEING TECHNICAL ADVICE RELATED TO THE INSTALLATION OF ______{indicate building and construction goods being installed}; customer support services for dealers, distributors, builders and other trade professionals in the nature of PROVIDING information provision in the field of installation of building and construction materials, IN PARTICULAR ______{indicate specific item, e.g., non-metal flooring materials}; TECHNICAL customer support services in the nature of help desk services, NAMELY, PROVIDING TECHNICAL ADVICE related to the installation of _______{specify type} products in the field of building and construction; customer support services and help desk services, namely, providing information about the installation of construction materials, IN PARTICULAR ______{indicate specific item, e.g., non-metal flooring materials}; providing information to customers regarding the installation of building and construction products; technical support services, namely, troubleshooting and technical consultation RELATED TO regarding the installation of building and construction products

 

International Class 042: Platform as a service (PAAS) featuring computer software platforms for users to manage products and online purchases for their customers, to compare costs, to prepare budgets and to prepare cost reports; platform as a service (PAAS) services featuring computer software platforms for users to access information about fiber cement products, to create cost estimates for product purchases, to manage online product sales on a project-by-project basis, to manage inventory of goods on a project-by-project basis, and to provide users with software for billing purposes; software as a service (SAAS) services featuring software for creating 3D images, artwork and designs; software as a service (SAAS) services featuring software that connects customers to product distributors; software as a service (SAAS) services featuring software that allows users to track product purchases and to calculate cost estimates for product purchases; _______{specify type, e.g., architectural design} advisory and consultancy services, NAMELY, specifically, color analysis for the purpose of interior and exterior design, providing a means of color coordinating building and construction materials, and providing color analysis for the design of cladding, siding, trim, panels and boards for building and construction; PROVIDING AN online INTERACTIVE WEBSITE portal FEATURING TECHNOLOGY that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives; providing a website featuring information in the field of home and building ARCHITECTURAL design, interior DESIGN, exterior ARCHITECTURAL design, and architecture; providing a website featuring technology THAT ENABLES USERS TO PLACE AND TRACK for placing and tracking orders for builders, contractors and construction sales professionals; PROVIDING AN online WEB SITE portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, TO access instructional videos and materials in the fields of building and construction, and contact customer service representatives; software as a service (SAAS) featuring software for use in FOR ______{specify the function of the software, e.g., managing}  construction takeoff; software as a service (SAAS) featuring software for quantifying the volume of construction materials required from construction project measurements and from blueprints; software as a service (SAAS) featuring software for the construction industry for preparing bids; software as a service (SAAS) services featuring software for construction project management; software as a service (SAAS) services featuring software for PROVIDING provides digital estimations of measurements from blueprints; software as a service (SAAS) services featuring software for creating digital plans and allowing users to view and share digital plans; PROVIDING A WEBSITE FEATURING INTERIOR DESIGN INFORMATION ON COLORS, PAINTS, COLOR ANALYSIS, COLOR COORDINATION, AND COLOR SELECTION

 

Additions Not Allowed: Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

On-line Acceptable Identification of Goods and Services Manual Information: 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.

 

MARK DESCRIPTION REFERENCING COLOR NEEDED

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:  “The mark consists of the following:  the stylized green capital letters “J” and “H” in a diagonal position with the top of the "J" and the bottom of the "H" extending to form a green circle. The color white represents background, outlining, shading, and/or transparent areas and is not part of the mark.

 

RESPONSE GUIDELINES

 

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.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 17, 2020 for

U.S. Trademark Application Serial No. 88786425

 

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. 

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 17, 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.”