To: | Toughbuilt Industries, Inc. (tmdocket@nls.law) |
Subject: | U.S. Trademark Application Serial No. 90538950 - TOUGHBUILT - N/A |
Sent: | September 17, 2021 04:30:17 PM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90538950
Mark: TOUGHBUILT
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Correspondence Address:
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Applicant: Toughbuilt Industries, Inc.
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Reference/Docket No. N/A
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: September 17, 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
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—AMENDMENT REQUIRED
The identification of goods is indefinite and must be clarified because certain listed items do not sufficiently identify the applied-for goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the wording “keyboards; display screens; digital sensors” and “computer application software” are all indefinite and overbroad. For instance, keyboard is broad enough to encompass keyboard instruments in class 15. Furthermore, the wording “laptops as a portable computing device for mobile phones, scanners, laser measurers for measuring distance, thermal measurers for measuring temperature, infrared sensors for measuring heat and radiation, micrometers, calipers for measuring distance, digital multimeters, ammeters, ohmmeters, metal detectors, magnetic locator for locating metals, electronic stud finders, gas detectors for detecting the presence of gas, photoelectric sensors, hygrometers, and thermometers” is incoherent and ambiguous. Clarification is required. Finally, computer software and hardware must specify whether it is recorded and/or downloadable as non-downloadable, temporary software is in class 42.
Finally, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following identification, if accurate, with changes highlighted in bold:
Class 9: Mobile phones; electronic accessories or attachments for use with mobile phones, namely, earphones, earbuds, cell phone auxiliary cables, mobile telephone batteries, battery packs, computer keyboards, computer display screens, virtual reality goggles, audio speakers, cameras, camera lenses, inspection cameras, laptops as a portable computing device for mobile phones, namely, laptop computers; scanners; laser measurers for measuring distance, thermal measurers for measuring temperature, infrared sensors for measuring heat and radiation; micrometers; Calipers for measuring distance; digital multimeters; ammeters; ohmmeters; metal detectors; magnetic locator for locating metals, electronic stud finders; gas detectors for detecting the presence of gas; photoelectric sensors; hygrometers, and thermometers; digital sensors being touchscreen sensors for use with mobile phones for measuring distance, elevation, incline, mass, pressure, heat, moisture, temperature, voltage and light; Downloadable computer application software for mobile phones or handheld computers, namely, software for measuring, calculating, estimating, and surveying distances, elevation, incline, mass, pressure, heat, moisture, temperature and light; downloadable mobile applications for determining building codes, material costs, and labor costs
Class 15: Piano keyboards
Class 42: Temporary use of non-downloadable computer application software for mobile phones or handheld computers, namely, software for measuring, calculating, estimating, and surveying distances, elevation, incline, mass, pressure, heat, moisture, temperature and light
Scope Advisory
Applicant may amend the identification 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. Generally, any deleted goods and/or services 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.
MULTI-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services that may be 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 and/or services that may be classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one 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.
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.
Assistance. Please call or email the assigned trademark examining attorney to resolve the issues in this Office action. Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
How to respond. Click to file a response to this nonfinal Office action.
Byron S. Barahona, Esq.
/Byron Steve Barahona/
Examining Attorney
Law Office 127
Phone: (571)-270-5579
Byron.Barahona@uspto.gov
RESPONSE GUIDANCE