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: August 26, 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:
- PRIOR-FILED APPLICATIONS
- IDENTIFICATION AND CLASSIFICATION OF GOODS
- MULTIPLE-CLASS APPLICATION REQUIREMENTS
- EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
PRIOR-FILED APPLICATIONS
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. However, a
mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing dates of pending U.S. Application Serial Nos. 88022803, 87434715, and
87937833 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark
may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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
applications.
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 marks in the referenced applications. 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 AND CLASSIFICATION OF GOODS
In the identification of goods, applicant must use the common commercial or
generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,”
“materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.
See TMEP §§1401.05(d), 1402.03(a).
The identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice
of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services
not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in
identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the
identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses
from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
As detailed below, some of the occurrences of “tools” in International Class 8 are indefinite
and too broad and must be clarified because the wording does not make clear the nature of the specific tool and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1402.01, 1402.03. Machine tools and power-operated tools are generally classified in
International Class 7; e.g., “power-operated tools, namely, buffers;” “pneumatic hammers;” “electric nail pullers;” and “machine tools for breaking up road surface material.” Hand-operated tools are generally classified in International Class 8; e.g., “hand-operated cutting tools,” “pliers,” “manually-operated jacks,” and “hand tools, namely, socket
wrenches.” However, certain power-operated hand tools, such as “electric razors” and “electric hair clippers” are also classified in International Class
8. Additionally, medical, dentistry, and veterinary tools are classified in International Class 10; e.g., “dental picks” and “medical cutting devices.” Also, certain hand-operated tools, such as “corkscrews” and “flour sifters” are classified in International Class 21 as kitchen or household utensils, and certain hand-operated
tools, such as “divot repair tools for golfers” are classified in International Class 28 as sporting articles.
For assistance with identifying the specific applied-for tools, please see the USPTO’s U.S. Acceptable Identification of Goods and Services
Manual. See TMEP §1402.04.
Applicant may adopt the following identification and classification of goods, if accurate:
Class 7: Apparatus for drilling bore holes, namely, bore hole drilling machines; Apparatus for use in drilling, namely,
drilling machines; power drilling bits being parts of machines; power-operated tools, namely, drilling hammers; drilling heads being parts of machines; Drilling machine supports being parts of machines; Drilling machines;
Drilling rods; Drilling tips for drilling machines; Drilling tools for use with machines, namely, power drills; Machine tools for drilling; Machines for drilling; Power
operated drilling tools; Power operated tools for drilling; Tool bits for drilling being parts of machines; Earth boring apparatus, namely, earth boring machines; Earth diggers, namely, earth moving machines; Earth moving machines; earth working machines,
namely, excavators; Machine tools for breaking up earth; Ramming apparatus, namely, machines for earth displacement
Class 8: hand-operated tools, namely, drilling hammers
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).
If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
As
detailed above, the application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. 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 fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R.
§2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application
webpage.
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 44:
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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 44 multiple-class application and how to satisfy the requirements online using the Trademark
Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must explain whether the wording “HALO” in
the mark has any significance in the drilling or digging industry trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
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.
/John M.C. Kelly/
John M.C. Kelly
Examining Attorney
Law Office 119
571-272-9412
john.kelly@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.
