To: | Ostaco Windows & Doors (ipdocket@foxrothschild.com) |
Subject: | U.S. Trademark Application Serial No. 90229272 - FRANK - 134227.00068 |
Sent: | March 10, 2021 01:44:41 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90229272
Mark: FRANK
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Correspondence Address:
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Applicant: Ostaco Windows & Doors
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Reference/Docket No. 134227.00068
Correspondence Email Address: |
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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: March 10, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
IDENTIFICATION REQUIREMENT
Applicant may substitute the following wording, if accurate:
Class 6: Steel windows; aluminum windows; steel doors; aluminum patio doors; patio doors of metal; metal sliding doors; swing doors of metal; folding doors of metal, metal screen doors; metal windows; hybrid window frames consisting of aluminum and also pvc; hybrid window frames consisting of steel and also pvc; hybrid windows consisting of aluminum and also wood; hybrid windows consisting of steel and also wood; interior doors of steel; steel doors, aluminum doors; hybrid doors consisting aluminum and also pvc; hybrid doors consisting primarily of steel and also polyvinyl chloride (pvc), hybrid doors consisting primarily of aluminum and also wood; hybrid doors consisting primarily of steel and also wood;
Class 19: fiberglass windows for building; polyvinyl chloride (pvc) windows for building; composite windows consisting of pvc with wood fibre for building; wood window frames for building; hybrid window frames consisting of wood and pvc for building, hybrid window frames consisting of fiberglass and pvc for building, hybrid window frames consisting of pvc and wood, hybrid window frames consisting of fiberglass and wood; three-dimensional printed glass windows for building; tilt and turn glass windows for building; folding glass windows for building; wooden doors; exterior entry wooden doors; interior doors of wood, interior doors of medium density fiberboard, interior doors of fiberglass, interior doors of polyvinyl chloride (pvc), composite interior doors of consisting of pvc with wood fibre; fiberglass doors; polyvinyl chloride (pvc) doors; composite doors consisting of polyvinyl chloride (pvc) with wood fibre, wood doors, hybrid doors consisting of wood and polyvinyl chloride (pvc), hybrid doors consisting fiberglass and polyvinyl chloride (pvc), hybrid doors consisting of polyvinyl chloride pvc and wood, hybrid doors consisting of fiberglass and wood; three-dimensional printed wooden doors; pivot wood doors; multitrack wood doors; pocket wood doors; tilt and slide wood doors and wood patio doors; fiberglass patio doors; bi-folding wood doors; lift and slide wood doors; non-metal curtain walls; non-metal sliding doors
Class 40: Manufacture of windows and doors to the order and specification of others and custom manufacture of windows and doors
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.
FOREIGN REGISTRATION REQUIREMENT
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
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.
/Teague Avent/
Teague Avent
Examining Attorney
Law Office 125
(571) 272-1219
teague.avent@uspto.gov
RESPONSE GUIDANCE