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:  February 18, 2021

 

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 February 17^th, 2021, the examining attorney and Marina Dostal 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:

• REQUIREMENT – MARK DESCRIPTION
• REQUIREMENT – IDENTIFICATION & CLASSIFICATION OF GOODS
• MULTIPLE CLASS APPLICATION REQUIREMENTS

 

REQUIREMENT – MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. Specifically, applicant must clarify that that the center circular design is shaded within its borders, and reference how the curved lines appear in the mark.

 

The following description is suggested, if accurate: “The mark consists of a shaded circular design with a border made up of two concentric circles with four curved lines extending from the inner circular border toward the center of the design and the stylized letters “GE” centered inside of the shaded circle design.”

 

REQUIREMENT – IDENTIFICATION & CLASSIFICATION OF GOODS

 

Particular wording in the identification of goods is indefinite and must be clarified because applicant must clarify the nature or use of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant must clarify that the “protective shoe coverings” in Class 9 are “for protecting against accidents or injury”; applicant must clarify the nature and purpose of the “ear caps” identified in Class 10; and applicant must clarify whether the “disposable plastic gloves” identified in Class 21 are for general industrial use or for use in a particular industry.

 

Applicant must also clarify particular wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, the “protective sleeves” identified in Class 9 could refer to a type of “protective clothing especially made for use in laboratories” in Class 9, “protective sleeves used with orthopedic bracing systems to protect skin from abrasions” in Class 10, “sleeves of rubber for protecting parts of machines” in Class 17, or “arm guards” in Class 28. Similarly, the “back supports for workers” identified in Class 9 could refer to “support belts for workers” in Class 9, “back supports for medical purposes” in Class 10, or “back support cushions not for medical purposes” in Class 20. Also, the “safety belts for industrial protection” identified in Class 9 could refer to “safety belts in the nature of life belts for industrial protection” in Class 9 or “safety belts for vehicle seats for industrial protection” in Class 12.

 

In addition, Applicant has classified “disposable plastic gloves for laboratory and industrial use” in International Class 21; however, the proper classification for “disposable plastic gloves for laboratory use” is Class 9. Therefore, applicant may respond by (1) reclassifying these goods in the proper international class, or (2) deleting “disposable plastic gloves for laboratory use” from the application.  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 requirements specified in this Office action.

 

Applicant is also advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “battery chargers for electric vehicles.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Hard hats, protective eyeglasses, protective goggles being personal protective equipment (PPE), namely, safety goggles, welding goggles, welding eyeglasses being welding goggles, welding masks, protective industrial face shields, protective industrial face masks, gloves for laboratory purposes, protective gloves for industrial use, battery chargers for electric vehicles, protective work gloves, protective sleeves being protective clothing especially made for use in laboratories, dust masks, protective industrial respirators, particle filters and vapor cartridges specially adapted for protective industrial respirators, safety harnesses other than for vehicles or sports purposes, safety belts in the nature of life belts for industrial protection, fall protection equipment for fall restraint and fall arrest, namely, lanyards, harnesses, life belts, lines, carabiners and anchorage connectors, safety vests in the nature of life vests, safety jackets in the nature of life jackets, reflective and illuminated clothing for the prevention of accidents, welding aprons being clothing for protection against accidents, irradiation and fire, protective shoe coverings for protecting against accidents or injury, protective welding and industrial clothing for the prevention of accidents being clothing for protection against accidents, knee pads for workers, back supports for workers in the nature of support belts for workers, work coveralls for protection against accidents or injury; disposable plastic gloves for laboratory use

 

Class 10: Face covers being sanitary masks for protection against viral infection, ear plugs for noise protection being ear plugs for noise reduction, ear muffs in the nature of protective ear covering shields for noise protection, ear caps in the nature of protective ear covering shields for noise protection, thermometers for medical purposes and infrared thermometers for medical use; back supports for workers being back supports for medical purposes

 

Class 12: safety belts for vehicle seats for industrial protection

 

Class 17: protective sleeves of rubber for protecting parts of machines

 

Class 20: back supports for workers in the nature of back support cushions not for medical purposes

 

Class 21: Work gloves, disposable plastic gloves for general industrial use

 

Class 28: protective sleeves in the nature of arm guards

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 that are classified in at least seven (7) classes; however, applicant submitted a fee(s) sufficient for only three (3) class(es).  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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

CONCLUSION

 

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.

 

/Jillian Renee Burch/

Trademark Examining Attorney

Law Office 128

571-272-3384

jillian.burch@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 February 18, 2021 for

U.S. Trademark Application Serial No. 90206585

 

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. 

 

 

/Jillian Renee Burch/

Trademark Examining Attorney

Law Office 128

571-272-3384

jillian.burch@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 February 18, 2021, 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.”