Offc Action Outgoing

If this wording has meaning in a foreign language, applicant must submit a statement translating the non-English wording in the mark. 37 C.F.R. §2.32(a)(9); TMEP §809. If some or all of the applied-for mark is in non-Latin characters, then applicant must also provide a statement transliterating the non-Latin characters, with either a translation of the corresponding non-English wording or a statement that the transliterated term has no meaning in a foreign language. 37 C.F.R. §2.32(a)(10); TMEP §809.

The following formats are acceptable for a translation and transliteration statement:

The English translation of YOSHI in the mark is “{SPECIFY}.”

TMEP §809.03.

If this term has no meaning in a foreign language, applicant should provide the following statement: “The wording YOSHI has no meaning in a foreign language.” Id.

Classification of the Goods/Services

Applicant classified the goods and/or services “cake cutters, bread knives, kitchen utensils, namely, spoons, knives and forks” in International Class 021; however, the correct classification is International Class 008. Applicant must either delete these goods or add International Class 008 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

Identification of the Goods Indefinite

The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

Applicant may adopt the following identification, if accurate:

“Cake cutters, bread knives, kitchen utensils, namely, spoons, knives and forks,” in International Class 008.

“Dinnerware, namely, plates, plate lids, salad bowls and bowl lids, and serving bowls; household utensils, namely, kitchen tongs, ladles, serving forks, sandwich spreaders, namely, {further specify nature of product. Note: knives are Class 008 goods}, spatulas, cocktail shakers, serving platters, snack serving trays, serving trays, deviled egg serving trays, and scoops; drinking ware, namely, champagne glasses, flutes, tumblers, mugs, drinking glasses, wine glasses, party bombers, shooters, shot glasses and goblets; and dessert ware, namely, dessert cups, sundae dishes, parfait glasses, and dessert bowls,” in International Class 021.

Descriptions of goods and services should use the common, ordinary name for the goods and/or services. TMEP §1402.01. If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

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. See TMEP §1402.04.

Multiple Class Application - Use

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods/services by international class;

(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); and

(3) For each additional international class of goods and/or services, applicant must submit:

a. Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

b. One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

c. A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

d. Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

Clarification of the Number of Classes Intended

The application identifies goods and/or services that are classified in at least 2 classes; however, the fees submitted are sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).

Fees for Adding Classes

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; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

The filing fee for adding classes to a TEAS Plus application is $275 per class, provided all the following requirements are satisfied: (1) the fee(s) is submitted using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html or by examiner’s amendment; (2) applicant filed a complete TEAS Plus application; (3) applicant has filed and continues to file certain communications via TEAS (e.g., responses to Office actions); and (4) applicant maintains its authorization to receive Office communication via e-mail. 37 C.F.R. §§2.6(a)(1)(iii), 2.22(a), 2.23.

If any of the above TEAS Plus requirements are not satisfied, then applicant must submit a fee of $50 per class for all active classes in the application as filed; and the fee for adding any classes to the application shall be $325 per class if added via TEAS, or $375 per class if added in a paper response. 37 C.F.R. §§2.6(a)(1), 2.22(b), 2.23(b); see TMEP §810.

Drawing/Specimen Disagreement

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as EMI-YOSHI and EMI YOSHI; and the drawing shows the mark as YOSHI.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

The following is a sample declaration for a verified substitute specimen for use in a paper response:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)

Response to Office Action

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

/David A. Hoffman/

Examining Attorney

Law Office 107

(Ph) 571-272-8805

(Fx) 571-273-8805

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.