UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 10/19/2015

 

 

 

 

 

 

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

 

Summary of Issues Applicant Must Address

• Requirement for Copy of Foreign Registration Renewal
• Requirement for Acceptable Identification of Goods

 

Copy of Foreign Registration Renewal

 

The application specifies both a filing basis under Trademark Act Section 1 and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(a), (b), 1126(e); 37 C.F.R. §2.34(a)(1)-(3).  Although applicant submitted a copy of a foreign registration to satisfy the statutory requirements for the Section 44(e) basis, the foreign registration on which this application is based has now expired.  For an application filed under Section 44(e), the foreign registration must be in force at the time the United States issues a registration based on that foreign registration.  37 C.F.R. §2.34(a)(3)(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §1004.01(a).

 

Therefore, applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a).  If the certificate of renewal or other certification is not written in English, applicant must also provide an English translation.  See 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  See TMEP §1004.01(b).

 

Alternatively, applicant may rely on the Section 1 basis alone for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(1)-(2); TMEP §806.01(a), (b).  If applicant wants to rely solely on the Section 1 basis and not provide proof of renewal of the foreign registration, applicant can request deletion of the Section 44(e) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Identification of Goods – As to Specified Goods in Class 21

 

The applicant’s statement of use includes an attached page summarizing the changes to the filing bases of the goods as follows:

 

(Based on 44(e)) bake-in-oven boxes; cookery moulds; containers for household and cooking use not made of precious metals, nor plated; utensils for household and cooking use not made of precious metals, nor plated, namely, universal sealing lids, steamers, cookware in the nature of food covers for use in microwave ovens, cutting boards, colanders, double boilers, cookware in the nature of over boil protectors, tea infusers; moulds for freezing; plastic beakers, namely, wide-mouthed drinking cups for household use; cake moulds; servingware for serving food and drinks; household and kitchen implements neither of precious metal, nor electrical, namely, strainers, storage containers, bowls, bottle stoppers specially adapted for use with wine bottles, covers for drinking vessels, reusable self-sealing silicone lids for household use, reusable self-sealing silicone lids for bowls, cups, containers and the storage of food, and silcone sealing lids for cooking use; beverage glassware; tableware not of precious metal, namely, coffee services and tea services; (Based on Use in Commerce) containers for household and cooking use not made of precious metals, nor plated; utensils for household and cooking use not made of precious metals, nor plated, namely, universal sealing lids, steamers, cookware in the nature of food covers for use in microwave ovens, cutting boards, colanders, double boilers, cookware in the nature of over boil protectors, tea infusers; moulds for freezing; household and kitchen implements neither of precious metal, nor electrical, namely, strainers, storage containers, bowls, bottle stoppers specially adapted for use with wine bottles, covers for drinking vessels, reusable self-sealing silicone lids for household use, reusable self-sealing silicone lids for bowls, cups, containers and the storage of food, and silicone sealing lids for cooking use, in Class 21.

 

This requirement is limited to the goods highlighted above in bold.

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on November 29, 2013.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  The original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

An acceptable identification of goods and/or services is required in an application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.  An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a). 

 

The application, as amended, included the servingware in a list of goods limited with the following wording “household and kitchen implements neither of precious metal, nor electrical.”

 

However, the applicant has separated the servingware from that list of goods.  Thus, this portion of the proposed amendment is beyond the scope of the current identification because the servingware would now include goods made of precious metal and electrical servingware.

 

Thus, the identification, incorporating this portion of the proposed amendment, is not acceptable.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.  The applicant must either delete the servingware or reinstate it in the list of goods not made of precious metal and not electrical as follows:

 

(Based on 44(e)) bake-in-oven boxes; cookery moulds; containers for household and cooking use not made of precious metals, nor plated; utensils for household and cooking use not made of precious metals, nor plated, namely, universal sealing lids, steamers, cookware in the nature of food covers for use in microwave ovens, cutting boards, colanders, double boilers, cookware in the nature of over boil protectors, tea infusers; moulds for freezing; plastic beakers, namely, wide-mouthed drinking cups for household use; cake moulds; household and kitchen implements neither of precious metal, nor electrical, namely, strainers, storage containers, bowls, servingware for serving food and drinks, bottle stoppers specially adapted for use with wine bottles, covers for drinking vessels, reusable self-sealing silicone lids for household use, reusable self-sealing silicone lids for bowls, cups, containers and the storage of food, and silcone sealing lids for cooking use; beverage glassware; tableware not of precious metal, namely, coffee services and tea services; (Based on Use in Commerce) containers for household and cooking use not made of precious metals, nor plated; utensils for household and cooking use not made of precious metals, nor plated, namely, universal sealing lids, steamers, cookware in the nature of food covers for use in microwave ovens, cutting boards, colanders, double boilers, cookware in the nature of over boil protectors, tea infusers; moulds for freezing; household and kitchen implements neither of precious metal, nor electrical, namely, strainers, storage containers, bowls, bottle stoppers specially adapted for use with wine bottles, covers for drinking vessels, reusable self-sealing silicone lids for household use, reusable self-sealing silicone lids for bowls, cups, containers and the storage of food, and silicone sealing lids for cooking use, in Class 21.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

Response Guidelines

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/19/2015 FOR U.S. APPLICATION SERIAL NO. 76711939

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/19/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.