Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Summary of Issues that Applicant Must Address:

Identification of Goods Requirement
Significance Requirement

1. Advisory – Search Results:

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

2. Requirement – Identification of Goods:

The identification of goods or services should set forth common names, using terminology that is generally understood. The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).

Applicant classified the goods and/or services “forks” and “spoons” in International Class 021; however, the correct classification is International Class 008. See 37 C.F.R. §6.1. If applicant retains these goods and/or services in the application, then applicant must comply with the multiple-class requirements stated elsewhere in this Office action. See 37 C.F.R. §2.86; TMEP §§1403 et seq. Alternatively, applicant may amend the application to delete these goods and/or services. Additionally, if applicant’s forks and spoons are serving forks and serving spoons which are properly classified in International Class 021, applicant may clarify the goods for the record.

Applicant classified the goods and/or services “knives” in International Class 021; however, the correct classification is International Class 008. See 37 C.F.R. §6.1. If applicant retains these goods and/or services in the application, then applicant must comply with the multiple-class requirements stated elsewhere in this Office action. See 37 C.F.R. §2.86; TMEP §§1403 et seq. Alternatively, applicant may amend the application to delete these goods and/or services.

The wording “cuffing boards” in the identification of goods is indefinite and must be clarified because it is unclear what goods the applicant is providing. See TMEP §§1402.01, 1402.03. Applicant may amend the identification of goods to “cutting boards” if accurate.

Applicant may adopt the following identification, if accurate:

International Class 008:

Forks, knives, and spoons.

International Class 020:

Furniture, namely, garment storage racks and storage and organization units, namely, storage racks, hampers, shelving, wall cabinet, wall shelves, work stool, workbench, chefs table, rollable bed, magazine racks, shoe racks, photo screens for use as furniture, laundry hampers, and cat and dog beds; and wine racks.

International Class 021:

Household kitchen utensils, namely, graters, spatulas, strainers, turners, skimmers, wood chopping blocks, serving forks, serving spoons; Containers for household or kitchen use of bamboo; Cutting boards; Lazy susans; Salad bowls; Canisters for household and kitchen use; Fitted picnic baskets; Willow storage baskets; Mixing bowls; Mugs; Tumblers, namely, toothbrush holders, drinking tumblers; Pilsner drinking glasses; Dish drying racks; Cookware in the nature of cooking pot sets; and Trash cans.

International Class 022:

Laundry bags and stands for laundry bags; and Tarpaulins.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods 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.

Requirements for a Multiple Class Application:

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

3. Requirement – Significance:

Applicant must explain whether “ULTRAHD” and “HD” have any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

4. Advisory – Response Guidelines:

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. If applicant retains an attorney, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The individual(s) signing must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. In such case, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

5. Advisory – Assistance:

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Colleen Dombrow/

Trademark Attorney

Law Office 101

Direct Dial: (571) 272-8262

Facsimile: (571) 273-9101

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.