UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 6/22/2009

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

The Preliminary Amendment filed on April 6, 2009 is acceptable.

 

Search Results

 

Note:  This is merely an advisory paragraph and not a requirement.

 

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).

 

Identification of Goods and/or Services Amendment Requirement

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966). 

 

The identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.  Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. 

 

The “measuring cups”, “thermometers”, “pizza cutters”, “egg slicers; shrimp deveiners and peelers; lobster and crab crackers; fish bone tweezers; oyster schuckers [sic]”, “mandolins; cherry and olive pitters; peelers”, “zesters”, “knife sharpeners”, and “kitchen utility shears” goods and/or services are classified incorrectly.  Applicant must amend the application to classify the goods and/or services in International Class 8 and/or 9, as explained below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).  Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).  Please see suggestions below.

 

The wording “roasting forks”, “flexible lids designed for draining or pressing liquids from a food can and splatter screens”, “squeezers”, “shrimp deveiners and peelers”, “fish bone tweezers”, “mandolins”, “peelers”, “knife sharpeners”, “kitchen utility shears”, “sifters”, “basters”, “forks”, “spoons”, and “roasting pans” in the identification of goods and/or services is indefinite and must be clarified as to its composition and/or purpose, because it is too broad and could include goods and/or services in other international classes.  See TMEP §§1402.01, 1402.03.

 

The wording “schuckers” is misspelled.

 

The current identification reads as follows:

 

            International Class 8: Cutlery, namely, forks, spoons and knives; flatware, namely, forks, spoons and knives; forks; spoons; knives

 

            International Class 21: Utensils for barbecues, namely, forks, tongs, turners; cooking forks; serving forks; pasta serving forks; cooking utensils, namely, batter dispensers, grills, wire baskets, graters, cheese graters, sieves, spatulas, strainers, turners, pot and pan scrapers, rolling pins, whisks, skimmers, kitchen tongs, flexible lids designed for draining or pressing liquids from a food can and splatter screens; brushes for basting meat; cooking funnels; cooking skewers; roasting forks; measuring cups; garlic presses; food choppers (non-electric); thermometers; can openers (non-electric); pizza cutters; egg separators; spoon rests; trivets; kitchen ladles; coffee scoops; tea strainers; egg beaters (non-electric); egg slicers; shrimp deveiners and peelers; lobster and crab crackers; fish bone tweezers; oyster schuckers; squeezers; mandolins; cherry and olive pitters; peelers; oil cruets; salad spinners; zesters; sifters; knife sharpeners; basters; melon ballers; forks; spoons; creamer pitchers; bottle openers; bread boards; corkscrews; hand-operated grinders; tart scoops; serving spoons; kitchen utility shears; bake ware; cookware, namely, pots and pans; cooking pot sets; pots; pans; baking dishes; oven to table racks; casserole (dishes); pot lids; pot stands; frying pans; roasting pans; butter pans; glass pans; baking dishes; roasting dishes; dinnerware

 

The following wording in the current identification is acceptable, because it is sufficiently definite and properly classified:

 

            International Class 8: Cutlery, namely, forks, spoons and knives; flatware, namely, forks, spoons and knives; forks; spoons; knives

 

            International Class 21: Utensils for barbecues, namely, forks, tongs, turners; cooking forks; serving forks; pasta serving forks; cooking utensils, namely, batter dispensers, grills, wire baskets, graters, cheese graters, sieves, spatulas, strainers, turners, pot and pan scrapers, rolling pins, whisks, skimmers, kitchen tongs . . . ; brushes for basting meat; cooking funnels; cooking skewers; . . . garlic presses; . . . egg separators; spoon rests; trivets; kitchen ladles; coffee scoops; tea strainers; . . . ; oil cruets; salad spinners; . . melon ballers; . . . creamer pitchers; bottle openers; bread boards; corkscrews; hand-operated grinders; tart scoops; serving spoons; bake ware; cookware, namely, pots and pans; cooking pot sets; pots; pans; baking dishes; oven to table racks; . . . pot lids; pot stands; frying pans; . . .butter pans; glass pans; baking dishes; roasting dishes; dinnerware

 

Applicant may adopt the following identification of goods and/or services, if accurate:

 

            International Class 8: Cutlery, namely, forks, spoons and knives; flatware, namely, forks, spoons and knives; forks; spoons; knives; non-electric hand-operated food choppers; non-electric can openers; pizza cutters; egg slicers; non-electric shrimp deveiners and peelers; lobster and crab crackers; fish bone tweezers for household use; oyster shuckers; mandolins for cutting food; cherry and olive pitters; non-electric {insert foods being peeled, e.g., "fruit" and/or "vegetable"} peelers; zesters; non-electric knife sharpeners; household kitchen utility shears

 

            International Class 9: measuring cups; thermometers

 

            International Class 21: Utensils for barbecues, namely, forks, tongs, turners; cooking forks; serving forks; pasta serving forks; cooking utensils, namely, batter dispensers, grills, wire baskets, graters, cheese graters, sieves, spatulas, strainers, turners, pot and pan scrapers, rolling pins, whisks, skimmers, kitchen tongs, non-metal flexible lids designed for draining or pressing liquids from a food can and splatter screens; brushes for basting meat; cooking funnels; cooking skewers; cooking roasting forks; garlic presses; egg separators; spoon rests; trivets; kitchen ladles; coffee scoops; tea strainers; non-electric egg beaters; lemon squeezers; oil cruets; salad spinners; {insert objects being sifted or purpose of sifters, e.g., "flour" and/or "cooking"} sifters; food basters; melon ballers; {insert non-flatware purpose of forks, e.g., "barbecue", "serving", and/or "cooking"} forks; {insert non-flatware purpose of spoons, e.g., "mixing", "basting", "slotted", and/or "serving"} spoons; creamer pitchers; bottle openers; bread boards; corkscrews; hand-operated grinders; tart scoops; serving spoons; bake ware; cookware, namely, pots and pans; cooking pot sets; pots; pans; baking dishes; oven to table racks; casserole dishes; pot lids; pot stands; frying pans; cookware, namely, roasting pans; butter pans; glass pans; baking dishes; roasting dishes; dinnerware

 

See TMEP §1402.01.

 

            Amendment Guidelines

 

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):

 

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

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid, i.e., International Class 9 (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Identifications of goods and/or services can be amended only 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.

 

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.

 

If applicant wants to limit this case to two class(es), applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issue(s) raised in this Office action.

 

Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

Tina M. Kuan

/Tina M. Kuan/

Trademark Examining Attorney

Law Office 108

Phone Number: 571-272-4110

Fax Number: 571-273-4110

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/22/2009 FOR

APPLICATION SERIAL NO. 77705736

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77705736&doc_type=OOA&mail_date=20090622 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/22/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.