To: | Fritz Industries, Inc. (pjktmdocket@shb.com) |
Subject: | U.S. Trademark Application Serial No. 90366102 - FRITZ - 41761.348693 |
Sent: | May 05, 2021 10:59:57 AM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90366102
Mark: FRITZ
|
|
Correspondence Address:
|
|
Applicant: Fritz Industries, Inc.
|
|
Reference/Docket No. 41761.348693
Correspondence Email Address: |
|
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 05, 2021
This Office action is in response to applicant’s communication filed on April 6, 2021.
In a previous Office action(s) dated March 5, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services.
The following refusal(s) has been withdrawn: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains the requirement of an amendment to the identification of goods as discussed below. See 37 C.F.R. §2.63(b); TMEP §714.04.
After further review, requirements relevant to the mark in the subject application were inadvertently omitted in the previous office action. See TMEP §§706, 711.02. Specifically, the specimens submitted with respect to International Class 5 are deficient for the reasons discussed below. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
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.
SUMMARY OF ISSUES
SPECIMEN REFUSAL – CLASS 5
Specimen does not show use of the mark in commerce. Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 5. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Specifically, applicant’s specimen shows goods that appear to be consonant with its class 1 goods but not its goods in class 5, which are various biological and pharmaceutical products.
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 must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
The wording “non-toxic and non-pathogenic live bacteria complex water conditions that cleans and stabilizes fresh and salt water aquariums and commercial fish ponds” in the identification of goods for class 5 is indefinite and must be clarified because “water conditions” do not act as indicated here. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.. Applicant may substitute the following wording, if accurate (additions in bold, deletions in strike-through, explanations in brackets):
Class 5: Biological preparations for treating algae and or inhibiting growth of those organisms; non-toxic and non-pathogenic live bacteria complex water conditions
conditioners that cleans and stabilizes fresh and salt water aquariums and commercial fish ponds; anti-biotic preparation for use in the treatment of bacterial
diseases in fish; pharmaceutical products and medications for treating bacterial, viral, fungal, bactericidal, bacteriostatic, and parasitic conditions in fish and aquatic organisms; chelated copper
compounds for treating parasites in fish tanks
See TMEP §§1402.01, 1402.03.
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/James Prizant/
Trademark Examining Attorney
Law Office 128
(571) 270-3068
James.Prizant@USPTO.GOV
RESPONSE GUIDANCE