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:  May 14, 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.

 

 

Results of Trademark Act Section 2(d) Search

 

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 that Applicant Must Address

 

1.     Requirement to Clarify the Identification of Services

2.     Multiple Class Requirements - Section 1(b) Basis

3.     Requirement to Clarify the Mark Description

4.     Disclaimer Requirement

5.     Requirement for Information

 

 

Requirement to Clarify the Identification of Services

 

THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR SERVICES INDICATED BELOW.

 

The wording “toll compounding” in the identification of services must be clarified because it is too broad and could include services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “processing of plastics” in International Class 40 and design of plastic compounds in International Class 42.  Therefore, applicant must clarify the nature of the services and classify them in the proper international class(es).

 

The wording “drying, blending, mixing and re-packaging for plastics, resins, alloys and blends of plastics, resins and alloys ” in the identification of services must be clarified because it is too broad and could include services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “processing of plastics, namely, drying, blending, and mixing of plastics, resins, alloys and blends of plastics, resins and alloys” in International Class 40 and “re-packaging services, namely, packaging of plastics, resins, alloys and blends of plastics, resins and alloys for transportation” in International Class 39.  Therefore, applicant must clarify the nature of the services and classify the services in the proper international class(es).

 

Scope Advisory

 

Applicant’s goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Suggested Amendments

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.  If applicant wishes to accept the suggested deletions, applicant must manually delete the struck through wording in any USPTO response form.  Copying and pasting the language below will not result in deletion of the struck through wording, which will remain within the identification.

 

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

 

International Class 39:  Re-packaging services, namely, packaging of plastics, resins, alloys and blends of plastics, resins and alloys for transportation

 

International Class 40:  Plastics compounding and processing services for others; toll compounding services, namely, processing of plastics; processing of plastics, namely, drying, blending, and mixing and re-packaging for of plastics, resins, alloys and blends of plastics, resins and alloys

 

For assistance with identifying and classifying 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 Requirements – Section 1(b) Basis

 

Applicant must clarify the number of classes for which registration is sought.

 

The application identifies services 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 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 already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

 

Requirement to Clarify the Mark Description

 

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe 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 §808.02.  In this case, the description is vague because it merely indicates that the proposed mark is “stylized with design,” without indicating what the design element(s) consist of.

 

The following description is suggested, if accurate: 

 

The mark consists of the word “WESTCHESTER” above a design of comprising three circles stacked above four circles and the wording “PLASTICS”, with a horizontal line above “PLASTICS”.  All of these elements appear inside a solid rectangular carrier.

 

 

Disclaimer Requirement

 

Applicant must disclaim the wording “PLASTICS” because it is merely descriptive of a characteristic of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

Attachment 1 consists of an entry from the American Heritage Dictionary, which shows that “plastic” means “Any of various organic compounds produced by polymerization, capable of being molded, extruded, cast into various shapes and films, or drawn into filaments used as textile fibers.”  The identified services specifically consist of “plastics compounding and processing services” as well as drying, blending, mixing and re-packaging services “for plastics . . . and blends of plastics.”  Therefore, the term “PLASTICS” in the proposed mark immediately identifies the type of material to which the services pertain as being any of various organic compounds produced by polymerization, capable of being molded, extruded, cast into various shapes and films, or drawn into filaments used as textile fibers.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PLASTICS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

Requirement for Information

 

Applicant must provide a written statement explaining whether the services or any aspect of the services will be rendered in, or will have any other connection with, the geographic location named in the mark, namely, Westchester County, New York.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

 

Response Information

 

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

 

 

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@uspto.gov

 

 

 

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 May 14, 2021 for

U.S. Trademark Application Serial No. 90342241

 

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. 

 

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@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 May 14, 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.”