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:  April 30, 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.

 

Identification of Goods

The identification of goods is indefinite and must be clarified because some of the wording is misclassified. For example, the wording “component parts for guns,” now classified in class 9, is properly classified in class 13. Further, “non-telescopic gun sights for firearms equipped with illuminated reticles,” now classified in class 9, is also properly classified in class 13.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

Component parts for guns; Reticles as a component feature of an optical lens scope for rifle, gun, and firearms; Prismatic telescopic sights, namely, prism rifle scopes for use with firearms; Telescopic sights, namely, rifle scopes for use with firearms; Non-telescopic optical lens sights for use with firearms, namely, gun sights, micro dots, dot sights, reflex sights, holographic sights; Non-telescopic gun sights for firearms equipped with illuminated reticles; Gun scopes; Spotting scopes; Optical lens sights; Tactical laser sights; Laser range finder for cameras; Firearm attachments, namely, mounts for attaching night vision devices to a firearm Night vision devices for use with firearms; Thermo imaging cameras devices for use with firearms; Magnifiers for optical lens sights for firearms; Monoculars; Binoculars; Anti-reflection devices for use on telescopic sights and non-telescopic gun sights in the nature of sun shades or honeycomb flash filters specially adapted for or integrated in telescopic sights and non-telescopic gun sights, or are optional add-on accessories; Protective lens covers for use on telescopic sights and non-telescopic gun sights; Magnification adjustment levers specially adapted for or integrated in telescopic sights and telescopic gun sights, or are optional add-on accessories; Laser pointing devices for use with firearms, namely, firearm laser aiming devices; Tactical flashlights capable of being affixed to a firearm or handheld; Mounts, namely, risers, bases, scope mounts, spacers, extended mounts, moa mounts for use with firearms; Windage and elevation adjustment units sold as a component part of rifle and gun scopes; Firearm attachments, namely, clamps for attaching accessories to a firearm; Battery-powered motion sensors as a component part of rifle and gun scopes, in class 9;

Handheld tactical flashlights capable of being affixed to a firearm, in class 11;

Component parts for guns; non-telescopic gun sights for firearms equipped with illuminated reticles; Protective lens covers for use on non-telescopic gun sights; firearm attachments, namely, clamps for attaching accessories to a firearm; rifle mounts, namely, mounts, namely, risers, bases, scope mounts, spacers, extended mounts, moa mounts for use with firearms, in class 13.

 

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).

 

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.

 

Effective January 1, 2020, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services.  See Nice Classification, 11th ed., version 2020 (Nice 11-2020).  Applications filed on or after January 1, 2020 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to this date must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new version, the entire identification must comply with this version.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries.  See TMEP §1402.04.

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only three class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

Telephone for Clarification Recommended

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. 

 

Search Results

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.

 

Pro Se Response

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.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

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

 

 

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-9379(fax)

Inga.Ervin@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 April 30, 2020 for

U.S. Trademark Application Serial No. 88849324

 

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. 

 

 

Ervin, Inga

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-937

 

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 April 30, 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.”