UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/623560

 

Search Results

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

However, before the mark can be published for opposition, the applicant must address the following informalities:

 

Disclaimers

The applicant must disclaim the descriptive wording “FRESH” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because “fresh” refers to the quality/characteristic of the applicant’s goods.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use FRESH apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

Identification of Goods in International Class 7

The wording “tools” and “parts and fittings for the forgoing” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may amend to adopt the following:

 

• Machines and machine tools, namely, [indicate by common commercial name] for handling, processing, treating, storing, and transporting perishable products, food, food products, beverages, beverage products, and ingredients for the foregoing; machines for storage, treatment, preparation and presentation of perishable materials, namely, food and beverages

Identification of Goods in International Class 29

The wording “including” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may amend to adopt the following, if accurate:

·        Fresh meat, fish, poultry and game; dried, canned, preserved, processed and/or cooked meat, fish, poultry and game; eggs; edible oils and fats; milk and milk products, namely, yogurt, cheese, cream; pickles and preserves.

Identification of Goods in International Class 30

The wording “wheat,” “grain,” “farinaceous products,” “including,” “foodstuffs including foodstuffs incorporating meat, fish, poultry or game or extracts thereof” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may amend to adopt the following identification of goods if accurate:

·        Raw and fresh wheat; processed grain; farinaceous food pastes for human consumption; rice; pasta; bread; flavoring ingredients, namely, sauces, salt, mustard, vinegar and condiments.

International Class 31

The wording “including” and “grains” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may amend to adopt the following:

·        Fresh fruit, vegetables, unprocessed grains and nuts; foodstuffs for animals.

International Class 35

The wording “wholesale, retail and online trade services,” “business advisory consultancy,” “consultancy,” “advisory,” “all the forgoing also available online and/or via the Internet” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

Further, the applicant has classified “machinery for storage, treatment, preparation and presentation of perishable materials including food and beverages” in International Class 7.  The correct classification is International Class 7.  The applicant must move these items to International Class 7.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

The applicant may amend to adopt the following, if accurate:

·        Wholesale store featuring foods and beverages; retail store services featuring foods and beverages; on-line retail store services featuring foods and beverages; business advisory consultancy, management, administration and information services; franchising, namely consultation and assistance in business management, organization and promotion; licensing of [indicate specific goods or concept being licensed]; conducting an on-line trade show exhibition, in the field of [indicate field]; providing an online computer database featuring trade information in the field of [indicate field]; advertising agencies; publicity and sales promotions services; product demonstration.

International Class 37

The wording “all the foregoing also available online” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

·        Construction, repair, maintenance and installation of [indicate type or by common commercial name] machines and machine tools for storage, treatment, preparation and presentation of perishable materials, food and beverage products; advisory and consultancy services in the field of construction, repair, maintenance and installation of the foregoing machines and machine tools.

International Class 40

The wording “perishable material treatment services including treatment for meat, fish, poultry and game including handling and aging” and “all the forgoing also available online and/or via the internet” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

·        Food processing services; advisory and consultancy in the field of food processing.

 

International Class 42

The wording “research, ” “testing and surveying services,” “including,” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

The applicant may amend to adopt the following:

·        Research in the field of [indicate subject matter], surveying and engineering services; licensing of intellectual property and/or technology; testing, inspection and research on agriculture, livestock breeding or fisheries; design for others in the field of [indicate specific field, e.g.].

 

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 services that are not within the scope of the services recited in the present identification.

 

Option to Delete Basis

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

A prompt response to this Office Action will expedite the handling of this matter.

 

Gina Hayes /gh/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

571-272-9407

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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