Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 17, 2020

 

This Office action is in response to applicant’s communication filed on February 4, 2020.

 

The trademark examining attorney notes that the attorney information requirement has been satisfied.  See TMEP §§713.02, 714.04. 

 

However, the identification and classification requirement is now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b).

 

 

FINAL Requirement – Identification and Classification

All identifications must be precise and identify the goods and/or services with particularity using common or commercial names.  TMEP §1402.01.  This requirement is now made FINAL. 

            Current Identification

 

Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):

 

International Class 009:  planetarium projectors; apparatus and instruments for astronomy, namely telescopes, binoculars, planisphere; cell phone straps; stands adapted for mobile phones; transmitting sets for telecommunication, namely walkie-talkies, transceivers, wireless applications; telecommunications transmitters; personal digital assistants (PDAs); smartphones; blank USB flash drives; encoded magnetic gift cards; encoded magnetic charge cards; electronic pocket translators; electronic agendas; electronic notice boards; eyeglasses; anti-glare glasses; eyeglass lenses; spectacle frames; contact lenses; eyeglass cases; eyeglass cleaning cloth; recorded computer game programmes; downloadable computer game programmes; computer programs being downloadable software; recorded computer game programmes; electronic circuits; CD-ROM drives; audio-visual compact disks featuring live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; phonograph records being sound recording discs featuring plays, live musical performances, live action movies, TV live action series, plays, interviews, documentary, music; downloadable music files; downloadable image files containing scene captures of TV animations, movies, TV live action series, still picture of movies, TV live action series, photos of character costume, photos of creators; pre-recorded videotapes featuring live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; videotapes and video disks recorded with animated cartoons; downloadable digital files, video tapes, DVD, BD, HDD drive featuring animated cartoons; electronic publications, downloadable, namely magazines, newsletters, brochuers, art books, novels, comics, visual novels, encyclopedia in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events; cinematographic film, exposed; exposed photographic slides; frames for photographic transparencies; mechanisms for coin-operated apparatus; voting machines; fingerprint imager; fingerprint scanners; phototelegraphy apparatus; bathroom scales; distance, pressure, temperature, humidity measuring apparatus; cables, electric; semi-conductors; integrated circuit chips; magnets; switches, electric; video screens; remote control apparatus for televisions, electric appliance, toys, robots; optical fibers, light conducting filaments; lightning arresters; electrolysers; fire extinguishers; burglar, personal security alarms; batteries, electric; decorative magnets; electronic collars to train animals; sports whistles; lenses for astrophotography; Protective sports helmet accessories that attach to the helmets, namely, mouth guards, ear pads, throat protectors, chin straps, face masks, jaw pads and eye shields.

 

 

International Class 014:  key chains; charms for key chains; key holders of precious metals; jewelry boxes; earrings; badges of precious metal; necklaces being jewelry; bracelets being jewelry; medals; rings being jewelry; lockets; jewelry; jewelry charms being charms for jewelry; shoe jewelry; jewelry, namely, amulets; wristwatches; alarm clocks; wall clocks; clocks; alloys of precious metal.

 

International Class 016:  paper bags; conical paper bags; bags being envelopes or pouches of paper or plastics, for packaging; towels of paper; printed matter, namely calendars, posters; drawing paper; kraft paper; handkerchiefs of paper; paper; photo, card, stamp albums; collection, trading, playing, greeting cards; note books; notebook paper; pencils; pencil caps; pencil lead holders; ballpoint pens; writing brushes; crayons; pencil sharpening machines, electric or non-electric; rubber erasers; sealing compounds for stationery purposes; bookmarkers; desk mats; drawing rulers; ink stones being ink reservoirs; stamp pads; stickers for stationery purposes; ink sticks; boxes for pens; paperweights; Indian inks; credit cards without magnetic coding; stationery cases; sealing stamps; business cards; name badge holders; folders for papers; paper-clips; stationery; printed sheet music; calendars; Printed matter, namely, magazines in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary; novel, visual, biology, art, documentary, non-fiction, encyclopedia books; writing or drawing books; diaries; pamphlets in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, event, exhibitions; posters; printed photographs; photograph stands; cardboard; paper mache figurines; gummed tape for stationery or household use; drawing boards; typewriters, electric or non-electric; terrestrial globes; tailors' chalk; modelling materials for use by adults, children, baby, infant; printed publications, namely magazines, newsletters, brochures, art books, novels, comics, visual novels, encyclopedia in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; children's activity books; Passport holders in the form of wallets; franking machines for office use, electric and electronic franking machines.

 

International Class 018:  handbags; beach bags; all-purpose carrying bags; decoration-purpose bags; calling, credit, magnetic chargeable, security, name, ID card cases; bags being envelopes or pouches of leather, for packaging; coin purses; change purses; small purses; textile, vinyl, leather, paper shopping bags; vanity cases, not fitted; beach umbrellas being beach parasols; umbrellas; animal skins; leather trimmings for furniture; Canes and walking sticks; leather leashes.

 

International Class 020:  cushions; bolsters; pillows; mattresses; packaging containers of plastic; fans for personal use, non-electric; desks; toilet mirrors, being hand-held mirrors; sleeping pads and sleeping mats; furniture; signboards of wood or plastics; looking glasses; split rings, not of metal, for keys; decorations of plastic for foodstuffs; kennels for household pets; identification bracelets, not of metal; coffins; coathooks, not of metal; slatted indoor blinds; fitted fabric furniture covers.

 

International Class 024:  Linen fabric; washcloths; face towels of textile; handkerchiefs of textile; bed sheets; quilts; quilt covers; duvet covers; pillow cases; woollen blankets; lap blankets; mattress covers; place mats of textile; table napkins of textile; cloth for textile use; banners of textile or plastic; wall hangings of textile; net curtains; curtains made of textile fabrics; curtains of plastic; tablecloths, not of paper; tapestries of textile; gummed waterproof cloth; felt cloth; fitted toilet lid covers of fabric; shrouds; unfitted fabric furniture covers.

 

International Class 025:  clothing, namely dresses; coats; sweaters; shirts; pajamas; underwear; bathing suits and swimsuits; bathing caps; camisoles; tee-shirts; bath robes; outerclothing; kimonos; aprons being clothing; scarves; scarfs; hosiery; pocket kerchiefs; gloves being clothing; neckties; neckerchiefs; bandanas; ear muffs being clothing; headwear; sock suspenders; suspenders; girdles being foundation garments; leather belts being clothing; rain boots; sandals; sports shoes; boots; Japanese style wooden clogs (geta); esparto shoes or sandals; footwear; masquerade costumes; football shoes; gymnastic shoes; spiked running shoes; climbing shoes; sports singlets; sports jerseys; sashes for wear; shower caps; sleep masks; hairdressing capes; wristbands as clothing or sweatbands; sports sweatbands.

 

International Class 027:  bath mats; matting, namely gymnastic mats, floor mats, bath mats, desk mats; floor coverings; decorative wall hangings, not of textile; artificial turf; gymnastic mats; wallpaper; carpets.

 

International Class 028:  games adapted for use with television receivers; dice games; card games; quiz games; chess games; toys for pets; playing cards; plush toys; toy pianos; toy masks; apparatus for games, namely baseball bats, rackets, balls, masks, mitts, gloves, goals; home video game machines; portable games with liquid crystal displays; manipulative logic puzzles; bubble making wand and solution sets; kites; Chinese shuttlecocks (Jianzi); inflatable pool toys, pool noodle toys; play balloons; play balls; toys, namely, toy clocks and watches, clockwork toys of metal, electrically-driven toy cars, flywheel driven toy vehicles, toy brooches, toy whistles, lever action toys, toys made out of wooden boards or planks in the nature of toy building blocks, hollow toy-models of plywood or veneer, paper balloons for play articles, Karuta playing cards (Japanese card game), sets of sheet-paper dolls and changing clothes therefor, stuffed toys, one piece celluloid character toys, clockwork toys of plastics, hollow celluloid character toys, plastic character toys formed by blow molding, hollow rubber character toys formed by molding processes, rubber balls, inflatable thin rubber toys, hollow rubber character toys formed by bonding, solid rubber character toys formed by molding processes, musical boxes as play articles, toy glockenspiels, toy harmonicas, toy pianos, toy xylophones, toy construction sets, toy sets of carpenters' tools, housekeeping-play sets for children to imitate real life occupations, toy marbles, toy pistols, toy masks, toy fireworks, toy Christmas trees, hand-held games with liquid crystal displays, toy scooters, jigsaw puzzles, four-wheeled toy vehicles, bubble solution sets as toys, kites, glass beads as play articles, rocking horses, tricycles for infants, inflatable swimming pools as play articles, ring games, action figures and accessories therefor, plush toys, balloons, bath tub toys, ride-on toys, equipment sold as a unit for playing card games, toy vehicles, flying discs, toy banks, Christmas tree ornaments, and toy masks and costume masks; kendo wooden swords; trading cards for games; Japanese traditional dolls; board games; conjuring apparatus, namely magic tricks; billiard balls; play balls; nets for sports; waist protectors for athletic use; palm guards for sports use; leg guards for athletic use; arm braces for sports use; stomach protectors for sports use; sports belts, namely weight lifting belts, uniform belts; chest protectors for sports; butterfly nets; body-training apparatus; archery implements; hunting game calls; in-line roller skates; Christmas tree ornaments except confectionery and electric Christmas tree lights; rods for fishing; twirling batons; camouflage screens being sports articles; scratch cards for playing lottery games.

 

International Class 030:  tea; coffee; cocoa; pies; bread; sandwiches; pizzas; hot dog sandwiches; cones for ice cream; instant noodles; ramen (Japanese noodle-based dish); cereal preparations, namely breakfast cereal, cereal bars, lunch cereal, dinner cereal; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; noodle-based prepared meals; tea-based beverages; sugar; chocolate; honey; cereal-based snack food; starch for food; edible ices; cooking salt; vinegar; seasonings; yeast; aromatic preparations for food, namely vanilla extract, rose extract, jasmine extract, cassis extract, peppermint extract, spearmint extract, lemon extract, grapefruit extract, lime extract; starch-based preparations for stiffening whipped cream; meat tenderizers for household purposes; gluten additives for culinary purposes being food additives for non-industrial use.

 

International Class 041:  theatre productions; organization of live musical performances shows, movie shows, TV animation shows, TV live action series shows, music shows, plays, interview shows, documentary shows, events shows, exhibitions shows for cultural and entertainment purposes; arranging and conducting of concerts; production of live musical performances shows, movie shows, TV animation shows, TV live action series shows, music shows, plays, interview shows, documentary shows, events shows, exhibitions shows; providing on-line music, not downloadable; providing films, not downloadable, via video-on-demand transmission services; providing television programmes, not downloadable, via video-on-demand services; providing on-line videos, not downloadable, in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; providing facilities for the production of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions, namely performance venues, studios, dressing rooms, recording rooms; movie and television film production and distribution; presentation of live show performances; presentation of variety shows; presentation of circus performances; theatrical shows provided at performance venues; presentation of musical performances; production of television programs; production of radio and television programmes; providing recreation facilities; providing karaoke facilities; instruction services in the field of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; bookmobile services; publication of on-line books and journals; rental of video tapes; toy rental; games equipment rental; conducting guided tours of production places of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; animal training; modelling for artists; organization of lotteries; rental of indoor aquaria; rental of lighting apparatus for movie sets or film studios, rental of lighting apparatus for stages; electronic games services provided by means of the internet; providing on-line computer games.

 

International Class 042:  meteorological information; industrial design; research and development of new products for others; computer programming; leasing of computer programs; technical research in the field of weathers, climates; quality control for others; surveying; chemistry services, namely laboratory analysis in the field of chemistry; biological research; material testing; construction drafting; dress designing; authenticating works of art; graphic arts design; cloud seeding; handwriting analysis, namely, graphology; cartography services; weighing of goods for others.

 

International Class 043:  agency services for the reservation of temporary accommodation; restaurant services; rental of meeting rooms; retirement home services; day-nursery services being crèche services; boarding for animals; rental of chairs, tables, table linen, glassware; rental of cooking apparatus; rental of drinking water dispensers; rental of lighting apparatus for public parks, studios, events, exhibitions; providing facilities for exhibitions.

 

The identification is unacceptable as presently worded because certain goods and/or services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods and/or services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods and/or services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Specifically, in addition to the issues identified below, the wording “BD” in the identification of goods in International Class 009 is a punctuated form or acronym form of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the previously attached U.S. Registration Nos. 3657054 and 2901104, both for “BLU-RAY DISC”, and also see the previously attached evidence showing “BD” is a shortened form of “BLU-RAY”. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Additionally, applicant should clarify that “HDD drive,” also in International Class 009, refers to “hard disc drive,” if accurate. 

 

In International Classes 009 and 016, applicant has listed the subject matter of several recorded items as being “in the field of … events.”  “Events” does not specify with the requisite particularity the subject matter of these goods, as it could refer to just about anything.  Applicant must clarify the general type of events. 

 

In International Class 009, applicant lists “remote control apparatus for … toys, robots.”  Remote controls for toys are in International Class 028.  Therefore, applicant must either move this wording to International Class 028 or delete it entirely.  Additionally, the general type of toy must be specified. 

 

Further, remote controls for robots would be classified in the same class as the robots would be.  However, robots are classified according to the type of robot, which applicant has not specified.  For instance, toy robots are in International Class 028, but surgical robots are in International Class 010, and laboratory robots are in International Class 009, but industrial robots are in International Class 007.  Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

The wording “collection, trading, playing, greeting cards” in the identification of goods for International Class 016 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass playing cards in International Class 028.  It is not clear what “collection… cards” would indicate.  Applicant may indicate that the goods are “collectible trading cards,” if accurate. 

 

The wording “textile, vinyl, leather, paper shopping bags” in the identification of goods for International Class 018 must be clarified because it is too broad and includes goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording includes paper shopping bags, which are classified in International Class 016.  

 

The word “outerclothing” 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.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 009; “surgical gowns” in International Class 010; “pet clothing” in International Class 018; and “shirts,” “shorts,” and “pants” in International Class 025.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “outerclothing” is in International Class 025, applicant may amend the identification to insert the word “namely,” after “outerclothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

The wording “matting, namely gymnastic mats, floor mats, bath mats, desk mats” in the identification of goods for International Class 027 must be clarified because it is too broad and includes goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording encompasses desk mats, which are in International Class 016.

 

Applicant has classified “uniform belts” in International Class 028; however, the proper classification is International Class 025 for belts that are clothing articles as part of uniforms.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Applicant is advised to delete or modify the duplicate entry in the identification in International Class 028 for “play balls.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “cereal preparations, namely breakfast cereal, cereal bars, lunch cereal, dinner cereal” in International Class 030 is unclear because, although breakfast cereal has an established and understood meaning (as shown by the attached evidence), the same cannot be said for lunch cereal and dinner cereal.  Applicant must clarify these goods by indicating their common or commercial name. 

 

In International Class 041, the wording:

 

organization of live musical performances shows, movie shows, TV animation shows, TV live action series shows, music shows, plays, interview shows, documentary shows, events shows, exhibitions shows for cultural and entertainment purposes

 

is unclear because it is not clear whether applicant is claiming organization of live… TV animation shows,” or other shows that appear to be aired over television or other mediums.  “Organization” of shows typically involves organizing and presenting live shows, such as magic shows or plays.  It is not a term typically used with production and presentation of television shows.  Therefore, applicant must clarify these services. 

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the proposed amendment identifies the following services in International Class 041:  “electronic games services provided by means of the internet; providing on-line computer games.”

 

This portion of the proposed amendment is beyond the scope of the original identification because the original identification did not provide electronic game services. 

 

The wording “rental of lighting apparatus for public parks, studios, events, exhibitions” in the identification of services for International Class 043 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass rental of lighting apparatus for theatrical lighting, which is in International Class 041. 

 

 

            Suggested Amendment

 

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):  

 

International Class 007:   Remote control apparatus for industrial robots. 

 

International Class 009:  planetarium projectors; apparatus and instruments for astronomy, namely telescopes, binoculars, planisphere; cell phone straps; stands adapted for mobile phones; transmitting sets for telecommunication, namely walkie-talkies, transceivers, and _______ {specify “downloadable” or “recorded”} wireless applications for ________ {specify the function or use of the applications, e.g., operating the walkie-talkies and transceivers}, sold as a unit; telecommunications transmitters; personal digital assistants (PDAs); smartphones; blank USB flash drives; encoded magnetic gift cards; encoded magnetic charge cards; electronic pocket translators; electronic agendas; electronic notice boards; eyeglasses; anti-glare glasses; eyeglass lenses; spectacle frames; contact lenses; eyeglass cases; eyeglass cleaning cloth; recorded computer game programmes; downloadable computer game programmes; computer programs being downloadable software; recorded computer game programmes; electronic circuits; CD-ROM drives; audio-visual compact disks featuring live musical performances, movies, animated TV shows, TV live action series, music, plays, interviews, documentaries, ________ {specify type of events, e.g., sporting} events, and _______ {specify general type of exhibitions, e.g., museum} exhibitions; phonograph records being sound recording discs featuring plays, live musical performances, live action movies, TV live action series, plays, interviews, documentary, music; downloadable music files; downloadable image files containing scene captures of TV animations, movies, TV live action series, still picture of movies, TV live action series, photos of character costume, photos of creators; pre-recorded videotapes featuring live musical performances, movies, animated TV shows, TV live action series, music, plays, interviews, documentaries, ________ {specify type of events, e.g., sporting} events, and _______ {specify general type of exhibitions, e.g., museum} exhibitions; videotapes and video disks recorded with animated cartoons; downloadable digital files, pre-recorded video tapes, pre-recorded DVDs and hard disc drives all featuring animated cartoons; electronic publications, downloadable, namely magazines, newsletters, brochures, art books, novels, comics, visual novels, and encyclopedias in the field of live musical performances, movies, animated TV shows, TV live action series, music, plays, interviews, documentaries, and ______ {specify type of events, e.g., sporting} events; cinematographic film, exposed; exposed photographic slides; frames for photographic transparencies; mechanisms for coin-operated apparatus; voting machines; fingerprint imager; fingerprint scanners; phototelegraphy apparatus; bathroom scales; distance, pressure, temperature, humidity measuring apparatus; cables, electric; semi-conductors; integrated circuit chips; magnets; switches, electric; video screens; remote control apparatus for televisions, electric _______ {specify type of appliances, e.g., kitchen} appliances, and _______ {specify type of robots appropriate for this class, e.g., tactical} robots; optical fibers, light conducting filaments; lightning arresters; electrolysers; fire extinguishers; burglar, personal security alarms; batteries, electric; decorative magnets; electronic collars to train animals; sports whistles; lenses for astrophotography; Protective sports helmet accessories that attach to the helmets, namely, mouth guards, ear pads, throat protectors, chin straps, face masks, jaw pads and eye shields.

 

International Class 014:  key chains; charms for key chains; key holders of precious metals; jewelry boxes; earrings; badges of precious metal; necklaces being jewelry; bracelets being jewelry; medals; rings being jewelry; lockets; jewelry; jewelry charms being charms for jewelry; shoe jewelry; jewelry, namely, amulets; wristwatches; alarm clocks; wall clocks; clocks; alloys of precious metal.

 

International Class 016:  paper bags; conical paper bags; bags being envelopes or pouches of paper or plastics, for packaging; towels of paper; printed matter, namely calendars, posters; drawing paper; kraft paper; handkerchiefs of paper; paper; photo, card, stamp albums; collectible trading cards; greeting cards; note books; notebook paper; pencils; pencil caps; pencil lead holders; ballpoint pens; writing brushes; crayons; pencil sharpening machines, electric or non-electric; rubber erasers; sealing compounds for stationery purposes; bookmarkers; desk mats; drawing rulers; ink stones being ink reservoirs; stamp pads; stickers for stationery purposes; ink sticks; boxes for pens; paperweights; Indian inks; credit cards without magnetic coding; stationery cases; sealing stamps; business cards; name badge holders; folders for papers; paper-clips; stationery; printed sheet music; calendars; Printed matter, namely, magazines in the field of live musical performances, movies, TV animation, TV live action series, music, plays, interviews, documentary films; novels; visual books being picture books; books in the field of biology, art, and documentary films; encyclopedia books; writing or drawing books; diaries; pamphlets in the field of live musical performances, movies, TV animation, TV live action series, music, plays, interviews, documentaries, ________ {specify type of events, e.g., sporting} events, and ______ {specify type of exhibitions, e.g., museum} exhibitions; posters; printed photographs; photograph stands; cardboard; paper mache figurines; gummed tape for stationery or household use; drawing boards; typewriters, electric or non-electric; terrestrial globes; tailors' chalk; modelling materials for use by adults, children, baby, infant; printed publications, namely magazines, newsletters, brochures, art books, novels, comics, visual novels, and encyclopedias in the field of live musical performances, movies, TV animation, TV live action series, music, plays, interviews, documentaries, _______ {specify type of events, e.g., sporting} events, and ________ {specify type, e.g., museum} exhibitions; children's activity books; Passport holders in the form of wallets; franking machines for office use, electric and electronic franking machines; paper shopping bags; desk mats.

 

International Class 018:  handbags; beach bags; all-purpose carrying bags; decoration-purpose bags being ________ {specify the nature of these goods or clarify them by using the common or commercial name for the goods, e.g., purses}; card cases for calling cards, credit cards, magnetic chargeable ______ {specify type of card, e.g., credit} cards, security cards, name cards, and ID cards; bags being envelopes or pouches of leather, for packaging; coin purses; change purses; small purses; textile, vinyl, and leather shopping bags; vanity cases, not fitted; beach umbrellas being beach parasols; umbrellas; animal skins; leather trimmings for furniture; Canes and walking sticks; leather leashes.

 

International Class 020:  cushions; bolsters; pillows; mattresses; packaging containers of plastic; fans for personal use, non-electric; desks; toilet mirrors, being hand-held mirrors; sleeping pads and sleeping mats; furniture; signboards of wood or plastics; looking glasses; split rings, not of metal, for keys; decorations of plastic for foodstuffs; kennels for household pets; identification bracelets, not of metal; coffins; coathooks, not of metal; slatted indoor blinds; fitted fabric furniture covers.

 

International Class 024:  Linen fabric; washcloths; face towels of textile; handkerchiefs of textile; bed sheets; quilts; quilt covers; duvet covers; pillow cases; woollen blankets; lap blankets; mattress covers; place mats of textile; table napkins of textile; cloth for textile use; banners of textile or plastic; wall hangings of textile; net curtains; curtains made of textile fabrics; curtains of plastic; tablecloths, not of paper; tapestries of textile; gummed waterproof cloth; felt cloth; fitted toilet lid covers of fabric; shrouds; unfitted fabric furniture covers.

 

International Class 025:  clothing, namely dresses; coats; sweaters; shirts; pajamas; underwear; bathing suits and swimsuits; bathing caps; camisoles; tee-shirts; bath robes; outerclothing, namely, ________ {list particular items, e.g., coats and jackets}; kimonos; aprons being clothing; scarves; scarfs; hosiery; pocket kerchiefs; gloves being clothing; neckties; neckerchiefs; bandanas; ear muffs being clothing; headwear; sock suspenders; suspenders; girdles being foundation garments; leather belts being clothing; rain boots; sandals; sports shoes; boots; Japanese style wooden clogs (geta); esparto shoes or sandals; footwear; masquerade costumes; football shoes; gymnastic shoes; spiked running shoes; climbing shoes; sports singlets; sports jerseys; sashes for wear; shower caps; sleep masks; hairdressing capes; wristbands as clothing or sweatbands; sports sweatbands; belts for uniforms.

 

International Class 027:  bath mats; matting, namely gymnastic mats, floor mats, and bath mats; floor coverings; decorative wall hangings, not of textile; artificial turf; gymnastic mats; wallpaper; carpets.

 

International Class 028:  Remote control apparatus for toy ______ {specify type of toy, e.g., robots and vehicles}; playing cards; games adapted for use with television receivers; dice games; card games; quiz games being ______ {specify the form of the game, e.g., handheld electronic games, card games}; chess games; toys for pets; playing cards; plush toys; toy pianos; toy masks; apparatus for games, namely baseball bats, rackets, balls, _______ {specify type, e.g., catchers’} masks, mitts, gloves, goals; home video game machines; portable games with liquid crystal displays; manipulative logic puzzles; bubble making wand and solution sets; kites; Chinese shuttlecocks (Jianzi); inflatable pool toys, pool noodle toys; play balloons; play balls; toys, namely, toy clocks and watches, clockwork toys of metal, electrically-driven toy cars, flywheel driven toy vehicles, toy brooches, toy whistles, lever action toys, toys made out of wooden boards or planks in the nature of toy building blocks, hollow toy ______ {specify what the goods are models of, e.g., vehicle} models of plywood or veneer, paper balloons for play articles, Karuta playing cards (Japanese card game), sets of sheet-paper dolls and changing clothes therefor, stuffed toys, one piece celluloid character toys, clockwork toys of plastics, hollow celluloid character toys, plastic character toys formed by blow molding, hollow rubber character toys formed by molding processes, rubber balls, inflatable thin rubber toys, hollow rubber character toys formed by bonding, solid rubber character toys formed by molding processes, musical boxes as play articles, toy glockenspiels, toy harmonicas, toy pianos, toy xylophones, toy construction sets, toy sets of carpenters' tools, housekeeping-play sets for children to imitate real life occupations, toy marbles, toy pistols, toy masks, toy fireworks, toy Christmas trees, hand-held games with liquid crystal displays, toy scooters, jigsaw puzzles, four-wheeled toy vehicles, bubble solution sets as toys, kites, glass beads as play articles, rocking horses, tricycles for infants, inflatable swimming pools as play articles, ring games, action figures and accessories therefor, plush toys, balloons, bath tub toys, ride-on toys, equipment sold as a unit for playing card games, toy vehicles, flying discs, toy banks, Christmas tree ornaments, and toy masks and costume masks; kendo wooden swords; trading cards for games; Japanese traditional dolls; board games; conjuring apparatus, namely magic tricks; billiard balls; nets for sports; waist protectors for athletic use; palm guards for sports use; leg guards for athletic use; arm braces for sports use; stomach protectors for sports use; sports belts, namely weight lifting belts; chest protectors for sports; butterfly nets; body-training apparatus; archery implements; hunting game calls; in-line roller skates; Christmas tree ornaments except confectionery and electric Christmas tree lights; rods for fishing; twirling batons; camouflage screens being sports articles; scratch cards for playing lottery games.

 

International Class 030:  tea; coffee; cocoa; pies; bread; sandwiches; pizzas; hot dog sandwiches; cones for ice cream; instant noodles; ramen (Japanese noodle-based dish); cereal preparations, namely breakfast cereal and cereal bars; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; noodle-based prepared meals; tea-based beverages; sugar; chocolate; honey; cereal-based snack food; starch for food; edible ices; cooking salt; vinegar; seasonings; yeast; aromatic preparations for food, namely vanilla extract, rose extract, jasmine extract, cassis extract, peppermint extract, spearmint extract, lemon extract, grapefruit extract, lime extract; starch-based preparations for stiffening whipped cream; meat tenderizers for household purposes; gluten additives for culinary purposes being food additives for non-industrial use.

 

International Class 041:  theatre productions; organization of live musical performance shows, plays, live interview shows, live _____ {specify the type of “events shows” intended, e.g., wrestling demonstrations} and ______ {specify the type of “exhibitions” e.g., live wrestling exhibitions}; production and distribution of television shows and movies; arranging and conducting of concerts; production of live musical performances; production of plays; providing on-line music, not downloadable; providing films, not downloadable, via video-on-demand transmission services; providing television programmes, not downloadable, via video-on-demand services; providing on-line videos, not downloadable, in the field of live musical performances, movies, TV animation, TV live action series, music, plays, interviews, documentaries, ______ {specify the type of events, e.g., fashion show} events, and ______ {specify type of exhibitions, e.g., museum} exhibitions; providing facilities for the production of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions, namely performance venues, studios, dressing rooms, recording rooms; movie and television film production and distribution; presentation of live show performances; presentation of variety shows; presentation of circus performances; theatrical shows provided at performance venues; presentation of musical performances; production of television programs; production of radio and television programmes; providing recreation facilities; providing karaoke facilities; instruction services in the field of live musical performances, movies, TV animation, TV live action series, music, plays, interviews, documentaries, and producing special events and cultural exhibitions; bookmobile services; publication of on-line books and journals; rental of video tapes; toy rental; games equipment rental; conducting guided tours of production places of live musical performances, movies, TV animations, TV live action series, music, plays, interviews, documentary, events, exhibitions; animal training; modelling for artists; organization of lotteries; rental of indoor aquaria; rental of lighting apparatus for movie sets or film studios.

 

International Class 042:  meteorological information; industrial design; research and development of new products for others; computer programming; leasing of computer programs; technical research in the field of weathers, climates; quality control for others; surveying; chemistry services, namely laboratory analysis in the field of chemistry; biological research; material testing; construction drafting; dress designing; authenticating works of art; graphic arts design; cloud seeding; handwriting analysis, namely, graphology; cartography services; weighing of goods for others.

 

International Class 043:  agency services for the reservation of temporary accommodation; restaurant services; rental of meeting rooms; retirement home services; day-nursery services being crèche services; boarding for animals; rental of chairs, tables, table linen, glassware; rental of cooking apparatus; rental of drinking water dispensers; rental of lighting apparatus for public parks; providing facilities for exhibitions.

 

            Limitation on Amendments

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

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.

 

            Adding Classes

 

The application identifies goods and/or 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 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).  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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

            Applicant’s Arguments

 

Applicant’s entire response to the requirement to amend the identification and classification of goods and services is as follows:

 

In response to the most recent Office Action issued by the PTO, Applicant submits that the current language in the descriptions of goods and services provides the level of specificity that is required by the ID Manual and no further revisions are necessary.

 

The response does not detail any particular entry to indicate how or why the applicant finds this entry to have the requisite degree of specificity.  On the other hand, the examining attorney has taken the care to detail how the particular items in the identification are unacceptable and has provided suggested language for amendment.  The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  Accordingly, applicant’s argument against this requirement is not persuasive. 

 

As such, the requirement is now made FINAL. 

 

Response Guidelines

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 February 17, 2020 for

U.S. Trademark Application Serial No. 88219240

 

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. 

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 February 17, 2020, 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.”