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:  October 15, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services
• Advisory: Partial Abandonment

 

 

Identification of Goods and Services

This requirement applies to the following goods and services only: “Antimicrobial chemicals; Chemicals in the nature of antimicrobials and sanitizers; Chemicals for use in treating products to make them antimicrobial” in International Class 1, “Protecting masks; Protective face masks not for medical purposes” in International Class 9, “Outerwear” in International Class 25, and “Treatment of materials, namely, the addition of antimicrobial agents to materials” in International Class 40.

 

The entries for “antimicrobial chemicals” and “chemicals for use in treating products to make them antimicrobial” in the identification of goods in International Class 1 are indefinite and must be clarified because the applicant does not sufficiently specify the intended use of the chemicals.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, an acceptable amendment to these entries would clarify the chemicals are for use in industry or for use on treating fabrics and textile products.

 

The wording “chemicals in the nature of antimicrobials and sanitizers” in the identification of goods for International Class 1 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass antimicrobial and sanitizing chemicals used in the manufacture of fabrics and textiles in International Class 1 as well as antimicrobial hand-sanitizing preparations in International Class 5. Thus, the applicant must revise this entry to clarify the nature of the goods and classify the goods in the proper international class.

 

Similarly, the wording “protecting masks” and “protective face masks not for medical purposes” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, these entries could encompass protective face masks for the prevention of accident or injury in International Class 9 as well as sanitary masks for protection against viral infection in International Class 10. Therefore, the applicant must revise these entries to clarify the intended use of the masks and classify the masks in the proper international class.

 

In International Class 25, the wording “outerwear” in the identification of goods is indefinite and must be clarified because the applicant does not specify the common commercial name or nature of its outerwear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, outerwear could refer to coats, hats, or gloves intended to be worn outside. Therefore, the applicant must revise this entry to clarify the clothing items that comprise its outerwear.

 

Furthermore, the wording “treatment of materials, namely, the addition of antimicrobial agents to materials” in the identification of services in International Class 40 is indefinite and must be clarified because the specifies neither the method by which the treatment is performed nor the materials which are being treated, such as fabrics.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  An acceptable amendment would clarify either of these elements. For example, an acceptable amendment to this entry in International Class 40 would be the following: “Treatment of materials, namely, the addition of antimicrobial agents to textile and fabric materials”.

 

The examining attorney has indicated below using “{ }” where the applicant must be specific. In addition, the examining attorney has bolded and underlined additions to the applicant’s original identification of goods.

 

Applicant may adopt the following identification of goods, if accurate:

 

Class 001:       Antimicrobial chemicals for use on fabrics; Antimicrobial and sanitizing chemicals used in the manufacture of fabrics and textiles; Chemicals for use in treating fabric and textile products to make them antimicrobial; Chemicals used in the manufacture of fabric or textiles

 

Class 005:       Sanitizing preparations for use in institutional and industrial areas; Sanitizing preparations for household use; Gauze

 

Class 009:       Protective face masks for the prevention of accident or injury; Protective face masks not for medical purposes, namely, protective face masks for the prevention of accident or injury

 

Class 010:       Sanitary masks for medical wellness purposes; Face masks for use by health care providers; Protecting masks, namely, sanitary masks for protection against viral infection

 

Class 024:       Textile fabrics for use in making clothing, bed sheets, hotel linens, body armor and bullet proof vests

 

Class 025:       T-shirts; Underwear; Socks; Shoes; Shirts; Pants; Shorts; Jackets; Gloves; Outerwear, namely, {indicate specific clothing items, e.g., coats, hats, gloves}

 

Class 040:       Treatment of materials, namely, the addition of antimicrobial agents to textile and fabric materials

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

 

Advisory: Partial Abandonment

If applicant does not respond to this Office action within the six-month period for response, the following goods and services will be deleted from the application: 

 

Class 001:       Antimicrobial chemicals; Chemicals in the nature of antimicrobials and sanitizers; Chemicals for use in treating products to make them antimicrobial

 

Class 009:       Protecting masks; Protective face masks not for medical purposes

 

Class 025:       Outerwear

 

Class 040:       Treatment of materials, namely, the addition of antimicrobial agents to materials

 

The application will then proceed with the following goods only: 

 

Class 001:       Chemicals used in the manufacture of fabric or textiles

 

Class 005:       Sanitizing preparations for use in institutional and industrial areas; Sanitizing preparations for household use; Gauze

 

Class 010:       Sanitary masks for medical wellness purposes; Face masks for use by health care providers

 

Class 024:       Textile fabrics for use in making clothing, bed sheets, hotel linens, body armor and bullet proof vests

 

Class 025:       T-shirts; Underwear; Socks; Shoes; Shirts; Pants; Shorts; Jackets; Gloves;

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

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 and requirement 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. 

 

If the applicant has any questions or requires assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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

 

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 October 15, 2020 for

U.S. Trademark Application Serial No. 90079197

 

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. 

 

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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 October 15, 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.”