Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/473292

 

This letter responds to the applicant’s communication filed on September 26, 2003.   The examining attorney acknowledges  the applicant’s amended identification of goods and addition of classes of goods.   For reasons that follow, however, the identification and classification of goods and specimen requirements are each maintained and made FINAL.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS – FINAL

 

In the initial office action dated March 24, 2003, the examining attorney found that the identification of goods was indefinite and further identified goods capable of classification in more international classes of goods than originally paid and provided for.    The examining attorney provided a suggested identification of goods and provided a multiple class advisory.

 

By way of response, the applicant has added five additional classes of goods and has provided an amended identification and classification of services which generally follows the suggested identification of goods provided by the examining attorney and which is largely acceptable. 

 

Nevertheless, a number of items remain indefinite, misclassified or capable of classification in additional classes of goods.   Moreover, the applicant has listed goods which are believed to be beyond the scope of the goods originally identified and which therefore cannot be allowed in the present identification. 

 

The following items remain indefinite: Refrigerator air cleaners, portable plastic storage containers for storing household, industrial, food product and kitchen goods; rink serving pans; crocks; plastic cooling instruments .

 

The following items are indefinite and misclassified and/or capable of classification in additional classes of goods: slicer and spindle cleaners; floor matting.

 

The following goods impermissibly exceed the scope of those goods originally identified in the application and therefore must and will be deleted from the application: shelf lining material, shelf paper and drawer liners.   The applicant was advised in the initial office action that while an application may be amended to clarify or limit the identification, additions to the identification are not permitted, 37 C.F.R. §2.71(a), TMEP §1402.06, and therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Therefore, the applicant may amend the identification to substitute any or all of the following if accurate:

 

International Class 3; Household cleaning preparations for cleaning spindles and slicers;

 

International Class 5; Adhesive bandages; bandages for skin wounds; sanitizers for household use, namely, sanitizing mop stations and sanitizing mop stations consisting primarily of sanitizers for household use; sanitizers for institutional use, namely sanitizing mop stations, sanitizing mop consisting primarily of sanitizers for institutional use, and slicer and spindle cleaners;

 

International Class 6; General purpose metal storage containers;

 

International Class 9; Protective clothing;

 

International Class 11; Household air cleaners for refrigerators;

 

International Class 20; Containers, not of metal for commercial industrial use;

 

International Class 21; Portable plastic storage containers for storing household, food product and kitchen goods; food related utensils, namely food and drink serving dishes and platters, pitchers, and crocks; dispensers for roll material, cups, lids, napkins, straws, food wrapping material, liquid soap, lotion, food condiments, and gloves; cutting boards, ice pails, ice scoops, funnels, pails, rolling pins; nail brushes; plastic kitchen gloves; plastic guards for sinks, namely, a strainer utensil for use in preventing kitchen and household utensils from being damaged by the disposal; baking sheets; spatulas; dish drying racks; guards for garbage receptacles, namely, garbage receptacle coverings for use in preventing utensils or trays from being pushed into receptacles; guards for dish tables, namely dish table opening coverings for use in preventing the loss of utensils at dish tables; all purpose portable household containers  plastic cooling instruments, namely cooling buckets for wine, ice buckets, portable coolers; crockery, namely, earthenware bowls, basins and mugs;

 

International Class 25; Gloves;

 

International Class 27; Carpet door mats; floor mats nor for vehicles; carpet runners; textile floor mats for use in the home

 

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the PTO website at http://www.uspto.gov under the heading Trademark Manuals in the Trademark index page.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Please note further, if the applicant prosecutes this application as a combined, or multiple‑class, application beyond the classes already identified paid and provided for, based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or  Presently, the applicant has not provided dates of use or any specimens for goods in class 3.

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by       the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c)

 

SPECIMEN – FINAL 

 

In the initial office action dated March 24, 2003, the examining attorney found that the specimen was unacceptable as evidence of actual trademark use because it was the cover of a catalog in the nature of advertising and promotional material.   The applicant was advised that printed advertising material generally is not acceptable as a specimen and that examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq. 

 

By way of response the applicant argues that the original specimen is in fact an acceptable specimen, citing Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).  To the extent that the specimens may be considered a catalog specimen pursuant to Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), it does not appear to meet the relevant criteria for displays associated with the goods.  TMEP section 904.06(a) states that “examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided:  (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address).”  Any form of advertising that satisfies these criteria should be construed as a display associated with the goods.  It is not necessary that the specimen list the price of the goods.”   

 

While the applicant has provided a correct statement of the law, the specimen of record does not presently meet these requirements.   The specimen of record is the cover of a product catalog, or more precisely a photocopy of a product catalog cover, and not a complete product catalog.  Therefore, the specimen of record does not (1) it include a picture of the relevant goods; (2)  show the mark sufficiently near the picture of the goods to associate the mark with the goods; or (3) it includes the information necessary to order the goods.   

 

The applicant may wish to submit the complete catalog as a specimen.   In this regard, this would be in the nature of a replacement or supplemental original specimen and not a new substitute specimen, and therefore a supporting declaration would not be required with the specimen.  Please note in this regard, however, that the specimen requirements noted in Lands End, supra, must be satisfied as to each class of goods in the application. 

 

Alternatively, the applicant may submit a specimen or specimens showing the mark as it is used in commerce for each class of goods for which registration is sought.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

For the forgoing reasons and those raised in the initial office action, the identification and classification of goods and specimen requirements are each maintained and made FINAL.  Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 x209

ecom115@uspto.gov

ecom115@uspto.gov

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.