Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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:  September 08, 2020

 

USPTO database searched; no conflicting marks found.  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.

 

Applicant must address issues shown below.  On September 3, 2020, the examining attorney and Sarah Otte Graber, Esq. discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

 

1.      Amended Identification of Goods Required

2.      Multiple-Class Application Requirements

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

The identification of goods must be clarified because many of the goods are indefinite and/or broad, and therefore, do not clearly and specifically indicate the nature of goods for which registration is sought.  Additionally, some of the goods are misclassified.  Therefore, applicant must amend the referenced wording below in accordance with the bolded, italicized guidance provided.  Please note that, in some instances, examining attorney has replaced any unacceptable wording with acceptable wording.  Finally, 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.

 

Applicant may adopt the suggested identification of goods below, if accurate.  See TMEP §1402.01.

 

·         “Horseshoe adhesive; polymer adhesive for repair and cushioning of horse hooves; adhesive for adhering blocks to hooves of bovines; composition for forming hardened insert in the cavity in a hoof to an elevation flush with a horseshoe, namely, _____ {specify nature of composition/chemical in class 001}” in International Class 001.

 

·         “veterinary preparations for the treatment of animal hooves; veterinary preparations in the nature of equine hoof care products, namely, a polymer adhesive for creating hoof extensions for foals; veterinary preparations, namely, synthetic curable liquid elastamer for forming protective layer on equine hooves for curative and therapeutic purposes; [RE-CLASSIFIED “horseshoe adhesive; polymer adhesive for repair and cushioning of horse hooves; adhesive for adhering blocks to hooves of bovines;” as these goods are misclassified and belong in class 001] [RE-CLASSIFIED “composition for forming hardened insert in the cavity in a hoof to an elevation flush with a horseshoe;” as these goods are misclassified, likely belong in class 001, and require further clarification] veterinary preparations for horses, namely, urethane polymers for treatment of horse hoof wall cracks” in International Class 005.

 

·         “Manually-operated adhesive dispensing guns and nozzles for [DELETED “same” as this wording does not make sense here since there is nothing within this class to refer it to] _____ {specify purpose in class 008}” in International Class 008.

 

·         “Manually-operated adhesive dispensing guns and nozzles for _____ {specify purpose in class 010, e.g., horses for physical therapy purposes}” in International Class 010.

 

• “Manually-operated adhesive dispensing guns and nozzles for _____ {specify purpose in class 028, e.g., horses for physical fitness purposes}” in International Class 028.

 

Applicant’s goods 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 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 will further limit scope, and once goods 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods 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 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least five classes; however, applicant submitted fees sufficient for only two classes.  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 001, 005, 008, 010, and 028.  See more information about specimens.

 

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).

 

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

 

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.

 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 September 08, 2020 for

U.S. Trademark Application Serial No. 90005244

 

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. 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 September 08, 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.”