To: | Swinerton Incorporated (ip@akerman.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88143629 - 11502-23 |
Sent: | 12/21/2018 1:22:44 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88143629
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Swinerton Incorporated
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 12/21/2018
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
· Multiple-Class Application Requirements
IDENTIFICATION OF SERVICES
The identification of goods and/or services is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 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 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.
Class 37
Applicant has classified the following goods and/or services in International Class 37, and has used indefinite language for the services: “submittals; value engineering for clients”. However, the proper classification for each item is as follows: “submittals” in International Class 35, and “value engineering for clients” in International Class 35.
Additionally, applicant has provided the application fee(s) for only two international class(es). Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services with definite language accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Class 42
Applicant may substitute the following wording, if accurate. Suggested additions and changes are in bold underline,
deletions in strikethrough, and items the applicant must clarify are in italics:
Class 16: Shop drawings
Class 35: Providing business support staff services for design management of doors, frames, and hardware in the nature of {specify type of hardware, e.g., “hinges”; business management services, namely, inviting and managing bid submittals on building and construction projects; procurement management services, namely, purchasing {specify goods or services, e.g., “construction equipment”, “office furniture”} for others; value engineering, namely, cost analysis for clients
Class 36: Real estate procurement for others
Class 37: Building supply services, namely,
providing expertise and guidance as an independent advisor to contractors in the nature of {specify what type of expertise and guidance is offered in Class
37, e.g., “consulting in the field of construction equipment installation”}; technical support for design management of doors, frames, and hardware in the nature of {specify type of hardware, e.g., “hinges”}, namely, {specify what type of Class 37 support, e.g., “technical advice
related to the installation of doors, frames, and hardware, namely, hinges”}; in-house {specify what is being detailed, e.g., “automobiles”, or use common
commercial name for detailing} detailing, shop drawings, and submittals; procurement management; and value engineering for clients; consulting in the field of commercial construction
and management of commercial construction projects for others
Class 42: Consulting in the field of
commercial construction and management of commercial construction projects for others; technical support for design management of doors, frames, and hardware in the nature of, {specify type of hardware, e.g., “hinges”}, namely, {specify what type of Class 42 support, e.g., “troubleshooting of
computer-aided design (CAD) software problems”}; Shop drawing services in the nature of drafting engineering drawings for others
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
(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 3: perfume; International Class 18: 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 two 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 classes 35, 37, and 42; and applicant needs a specimen for classes 16 and 36. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(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 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
COLOR CLAIM & MARK DESCRIPTION REQUIREMENTS
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors light blue, dark blue, gray, and white are claimed as a feature of the mark.”
Description: “The mark consists of a six sided shape, with two of the sides in the color light blue, two of the sides in the color dark blue, and two of the sides in the color gray, with a concentric six sided shape in the middle in the color white.”
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and is not part of the mark. The following description is suggested, if accurate:
“The mark consists of a six sided shape, with two of the sides in the color light blue, two of the sides in the color dark blue, and two of the sides in the color gray. The color white represents background, outlining, shading, and/or transparent area and is/are not part of the mark.”
TMEP §807.07(d).
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.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Derek van den Abeelen/
Examining Attorney
Law Office 126
(571) 270-3997
derek.vandenabeelen@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.