UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/666739
APPLICANT: FOODCAP INTERNATIONAL LIMITED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: FRESHNESS INSIDE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 628-5
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 76/666739
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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. §1052(d). TMEP §704.02.
However, in order to pursue registration, applicant must respond to the following.
The wording in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes. TMEP §§1402.01 and 1402.03. For example, “wheat” includes “processed wheat” in Int. Class 030 and “fresh wheat” in Int. Class 031. Similarly, “vegetables” includes frozen and canned vegetables in Int. Class 029 and fresh vegetables in Int. Class 031. Likewise, licensing services are classified in Int. Class 045. In addition, in the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a). Finally, the wording “ingredients for the foregoing” and “parts and fittings for the foregoing” in the identification of goods is indefinite and must be (1) clarified to specify the common commercial or generic name for the goods, or (2) deleted. TMEP §§1402.01 and 1402.03(a). This wording constitutes an open-ended “catch-all” word or phrase and is not acceptable because it fails to identify specific goods. Applicant must delete such words and phrases and “and/or” and “including.” In the identification, applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. Id.
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
Applicant may substitute the following wording, if accurate:
“Machine and machine tools, namely {specify, e.g., bin tippers, cutting machines, wash and chilling equipment, semi automatic and fully automatic centrifugal dryers, tumblers for marinating food, meat choppers, machines for food packaging, etc.} for handling, processing, treating, storing and transporting perishable products, namely {specify products, e.g., meats, vegetables, beverages, ingredient for the foregoing, namely, {specify ingredients}, and part and fittings for the foregoing goods.”
“Fresh meat, fish not live, poultry and game; dried, canned, preserved, processed and cooked meat, fish, poultry and game; eggs; edible oils and fats; milk and milk products, namely, yogurt, cheese, cream; pickles and preserves, namely {specify, e.g., fruit and vegetable preserves, etc.}; Prepared foodstuffs, namely, prepared meat-based dishes, prepared fish-based dishes, prepared poultry-based dishes, prepared game-based dishes.”
“Wheat, namely, processed wheat; grain, namely, processed grains; farinaceous products, namely, {specify, e.g., pancakes, cakes and farinaceous food paste for human consumption}; rice; pasta; bread; flavoring ingredients, namely, sauces, salt, mustard, vinegar and condiments, namely, {specify, e.g., pickled ginger, pepper sauce, etc.}.”
“Fresh fruit, fresh vegetables, unprocessed grains and raw nuts; animal foodstuffs.”
“Wholesale, retail and online trade services provided both on-line and not on-line and via the Internet, featuring food and beverages, machinery and machine tools for storage, treatment, preparation and presentation of perishable materials, namely {specify perishable materials, e.g., meats, vegetables, etc.}, food and beverages; business advisory, consultancy, management, administration and information services; franchise services, namely offering technical and business management assistance in the establishment and operation of {indicate specific type of establishment being operated}; advertising services, namely, demonstrations, displays, and promotions for the goods and services of others; publicity services for others. ”
Int. Class 037
“Construction, repair, maintenance and installation services provided both on-line and via the Internet and not on-line of machines and machine tools, namely, {specify types of machines and machines tools} for storage, treatment, preparation and presentation of perishable materials, namely {specify perishable materials}, food and beverage products, namely {specify food and beverage products}; consultancy services for all of the foregoing provided both on-line and via the Internet and not on-line.”
Int. Class 040
“Food processing services; perishable material treatment services provided both on-line and via the Internet and not on-line for meat, fish, poultry and game, namely, handling and aging treatment for meat, fish, poultry and game; consultancy services for all of the foregoing provided both on-line and via the Internet and not on-line.”
Int. Class 042
“Research, testing and surveying services provided both on-line and via the Internet and not on-line in the field of perishable materials, namely, {specify, e.g., food, food safety, etc.}; consultancy services for the foregoing provided both on-line and via the Internet and not on-line.”
Int. Class 045 [if adopted by applicant]
“Franchise licensing services provided both on-line and via the Internet and not-line; licensing of intellectual property and technology services provided both on-line and via the Internet and not on-line”.
As noted above, applicant classified various licensing services in International Class 035 and 042; however, the correct classification is International Class 045. Applicant must either delete these services or add International Class 045 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). Also, please note that
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.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on <an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section 44(e)>:
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
44(d) Basis Invalid – Application Not Filed Within 6-Month Priority Period
The application includes a claim of priority under Section 44(d) of the Trademark Act. However, applicant did not file the U.S. application within six months of the foreign filing, as Section 44(d) requires. 15 U.S.C. §1126(d). Therefore, the priority claim is invalid and cannot be accepted. TMEP §1003.02. Applicant must delete the Section 44(d) filing basis from the application.
/cglasser/
Caryn Glasser
Trademark Examining Attorney
Law Office 108
Phone: (571) 270-1517
Fax: (571) 270-2517
HOW TO RESPOND TO THIS OFFICE ACTION:
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.