To:
`
`Subject:
`
`Sent:
`Sent As:
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`JOSH A. PARTINGTON(dcdocketing@hdp.com)
`U.S. Trademark Application Serial No. 88636669 - DUNDERDON - 104TM-
`200481
`December 15, 2021 09:27:12 AM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`
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`U.S. Application Serial No.  88636669
`
`Mark:   DUNDERDON
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`Correspondence Address:  
`JOSH A. PARTINGTON
`HARNESS, DICKEY & PIERCE, PLC
`11730 PLAZA AMERICA DR. #600
`RESTON VA 20190 UNITED STATES
`
`Applicant:   Hultafors Group AB
`
`Reference/Docket No.  104TM-200481
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`Correspondence Email Address:   dcdocketing@hdp.com
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`CONTINUATION OF FINAL OFFICE ACTION
`
`Issue date:   December 15, 2021
`
`Notice of Incomplete Response to a Final Office Action – Additional Time Granted to Resolve
`Issues
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`Deadline for responding to this notice. To avoid abandonment of this application, the USPTO must
`receive one or both of the following submissions within the stated timeframe:
`
`
`File a complete response to the outstanding issues listed below that the
`(1)      
`USPTO receives within (1) thirty days of the issue date above, or (2) the time
`remaining in the six-month period for responding to the previous Office action,
`whichever is longer; and/or
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`File a notice of appeal that the Trademark Trial and Appeal Board receives
`(2)      
`within six months from the issue date of the previous final Office action. This notice of
`incomplete response does not extend the time for filing an appeal.
`
`• Requirement to Amend Identification of Goods
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`• Requirement to Amend Identification of Goods
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`See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)(2); TMEP §§715.03(a)(ii)(C), 718.03(b).
`
`Applicant granted additional time to resolve outstanding issues. On November 29, 2021, applicant
`filed a timely request for reconsideration that did not resolve all the issues in the May 28, 2021 final
`Office action. Because applicant made a bona fide attempt to advance the examination of the
`application in the response in compliance with 37 C.F.R. §2.65(a)(2), applicant is being granted
`additional time to address the following requirement in the previous Office action:
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`           
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`This requirement is maintained and continued. See TMEP §713.02.
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`           
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`Applicant previously was advised that the identification of goods is indefinite and must be clarified
`because the nature of the goods have not been specified in multiple instances.  See 37 C.F.R.
`§2.32(a)(6); TMEP §1402.01.  Although applicant amended the application in part, particular wording
`as set forth below, remains indefinite.  Applicant must amend the identification to specify the common
`commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common
`commercial or generic name, applicant must describe the product, its main purpose, and its intended
`uses.  See id.
`
`As previously discussed, the wording “protective clothing”, “protective industrial clothing” and
`“protective footwear” in the identification of goods is indefinite and must be clarified because the
`nature, use and/or purpose of the goods have not been indicated.  See 37 C.F.R. §2.32(a)(6); TMEP
`§1402.01.  A “life- preserving” or “protection against accidents” use or purpose must be indicated for
`any Class 9 protective clothing or protective headgear ID. For example, “protective clothing, namely,
`bullet resistant vests” or “protective headgear for boxing” would both be acceptable in Class 9, because
`the referenced items may prevent potentially life-threatening injury to the body and head, respectively.
`“Protective headgear, namely, hats” would be considered indefinite in Class 9, because it is not clear
`whether the hats serve a life-preserving purpose or whether the hats are just a regular clothing item in
`Class 25. “Protective headgear, namely, hard hats” would be acceptable in Class 9, because hardhats
`prevent life-threatening injury to the head.  Applicant must amend this wording to specify the common
`commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common
`commercial or generic name, applicant must describe the product, its main purpose, and its intended
`uses.  See id.
`
`Additionally, the wording “work clothes” in the identification of goods is indefinite and too broad and
`must be clarified because the word does not make clear the nature of the goods and could identify
`goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  As
`applicant already has listed work clothes, applicant is advised to delete the additional indefinite
`identification for “work clothes”.  The following are examples of acceptable identifications: “clothing
`for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in
`International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in
`International Class 25.  Therefore, applicant must amend the identification to specify the type of
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`clothing or delete the wording as proposed below.
`
`Further, the wording “caps” in the identification of goods is indefinite and too broad as listed and must
`be clarified because the word does not make clear the nature of the goods and could identify goods in
`more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The
`following are examples of acceptable identifications in International Class 25: “headwear, namely
`caps” and “caps being headwear”.  Therefore, applicant must amend the identification to clarify the
`type of caps it provides in Class 25.
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`Applicant may adopt the following wording, if accurate (proposed amendments in bold): 
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`International Class 9: Protective clothing, namely, clothing for protection against accident or injury;
`protective industrial clothing, namely, clothing for protection against accident or injury; clothing for
`protection against accidents or injury; protective work clothing for protection against accident or
`injury; protective footwear, namely, footwear  for protection against accident or injury ; protective
`industrial footwear; protective footwear for protection against accident or injury; protective work
`footwear for protection against accident or injury; knee-pads for workers; electronic apparatus and
`instruments for the reproduction of sound; headphones; cameras; microphones; protective and safety
`equipment, namely, personal protective equipment (PPE) in the nature of work gloves, safety
`goggles
`
`International Class 25: Clothing, namely, pants, trousers, undergarments, jackets, coats, vests, shirts, t-
`shirts, sweatshirts, hooded sweatshirts, sweaters, knitted sweaters, pullovers, shorts, ties, belts for
`clothing, long johns; footwear; work footwear; headwear, namely, caps, hats; work clothes, namely,
`pants, trousers, undergarments, jackets, coats, vests, shirts, t-shirts, sweatshirts, hooded sweatshirts,
`sweaters, knitted sweaters, pullovers, shorts, ties, belts for clothing, long johns
`
`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). Additionally, for U.S. applications filed under Trademark Act
`Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed
`the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6);
`Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu
`München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).
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`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.
`
`Applicant may view this notice and the previously issued final Office action in the Trademark Status
`and Document Retrieval (TSDR) system.
`
`

`

`
`
`/Oreoluwa Alao/
`Oreoluwa Alao
`Trademark Examining Attorney
`Law Office 108
`(571) 270-7210
`oreoluwa.alao@uspto.gov
`
`
`
`RESPONSE GUIDANCE
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`•
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`•
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`•
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`Missing the response deadline 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.  The Trademark Electronic Application System (TEAS) and Electronic System
`for Trademark Trials and Appeals (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.
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`

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`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on December 15, 2021 for
`U.S. Trademark Application Serial No.  88636669
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action in order to avoid your application
`abandoning.  Follow the steps below.
`
`(1)  Read the Office action HERE. This email is NOT the Office action.
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS). Your response must be received by the USPTO on or before 11:59 p.m.
`Eastern Time of the last day of the response period. Otherwise, your application will be
`abandoned. See the Office action itself regarding how to respond.
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.
`
`GENERAL GUIDANCE
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`•
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`•
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`•
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`•
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`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 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 may mail or email you trademark-
`related offers and notices - most of which require fees.  The USPTO will only email
`official USPTO correspondence from the domain "@uspto.gov".
`
`Hiring a U.S.-licensed attorney. If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process. The
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`

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`USPTO examining attorney identified above is not your attorney and cannot give you
`legal advice, but rather works for and represents the USPTO in trademark matters.
`
`