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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/646229

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

1.)    IDENTIFICATION OF GOODS

 

The identification of goods presently reads as follows:  “sweets, confectionary drops, boiled sweets, lollipops of any kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, ice cream, ice lollies, candy strips, liquid candy, candy gel, candy juice, marshmallows, candy foam, candy powder, biscuits, cakes, pastry and other confectionary products.”

 

The following items are acceptable as written:

 

Confectionery drops

Boiled sweets

Lollipops of any kind

Pastilles

Bubble gum

Chewing gum

Jelly beans

Licorice

Chocolate

Marzipan

Ice cream

Ice  lollies

Candy strips

Liquid candy

Candy gel

Marshmallows

Candy foam

Candy powder

Biscuits

Cakes

Pastry

 

The following items are unacceptable for the reasons as follows:

 

The wording "sweets" in the identification of goods needs clarification because the type of sweets is not indicated.  Applicant must amend the identification of goods to more clearly describe the nature of the goods.  TMEP §1402.01.  For example, applicant may adopt the following, if accurate:  “sweets, namely [SPECIFY, e.g., candies, gum sweets, sugar free sweets].”

 

The wording "wine-gum" in the identification of goods needs clarification because the nature of the goods is unclear.  Applicant must amend the identification of goods to more clearly describe the nature of the goods.  TMEP §1402.01.  For example, applicant may adopt the following, if accurate:  “chewing gum, namely, wine-gum.”

 

The wording "jellies" in the identification of goods needs clarification because the type of jellies is not indicated.  Applicant must amend the identification of goods to more clearly describe the nature of the goods.  TMEP §1402.01.  For example, applicant may adopt the following, if accurate:  “fruit jellies.”

 

The wording "candy juice" in the identification of goods needs clarification because the exact nature of the goods is not clear.  For proper classification of the goods, applicant must amend the identification of goods to more clearly describe the nature of the goods.  TMEP §1402.01.  For example, applicant may adopt the following, if accurate:  “candies containing juice.”

 

The wording "other confectionery products" in the identification of goods needs clarification because the exact items are not specified.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product in detail.  TMEP §1402.01.  Applicant may adopt the following wording:  “confectionery products, namely [SPECIFY items].”

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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

 

NOTE:  Applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

2.)    DISCLAIMER OF WORDING

 

Applicant must disclaim the descriptive wording “POPS” apart from the mark as shown because it merely describes a feature of the goods, namely, the lollipops.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “POPS” apart from the mark as shown.

 

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

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

 

 

 

 

3.)    SEARCH RESULTS

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Information regarding pending Application Serial No. 78468663 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

 

 

 

 

/Martha Santomartino/

Trademark Attorney

Law Office 112

(571) 272-9416

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.