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: 10/13/2010

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on September 27, 2010.

 

SPECIMEN – CLASS 24 and CLASS 25

 

The applicant’s specimen showing use of the mark on the goods in International Class 25 is acceptable. The specimen showing use of the mark for the “travelling rugs” in International Class 24 is unacceptable.

 

The web catalog or web page specimen is not acceptable to show trademark use as a display associated with the goods because it fails to include the necessary ordering information and thus, appears to be mere advertising material.  See In re Sones, 590 F.3d 1282, 1286-89, 93USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004); TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 513-14, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). 

 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use.  TMEP §904.04(b).  Leaflets, handbills, brochures, advertising circulars and other advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.

 

However, a web catalog, web page, or similar specimen, which is otherwise a form of advertising, is acceptable to show trademark use as a display associated with the goods if it includes (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods.  See In re Sones, 590 F.3d at 1286-89, 1118 USPQ2d at 1122-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; TMEP §904.03(h), (i); cf. Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316.  Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods.  See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822.

 

The applicant has indicated in its response that the specimen for Class 24 consists of two catalogues, the first showing the traveling rug on page 10, the second showing the points of order in the US on page 4. A catalog that provides “points of order” which are separate from the goods shown is unacceptable. The catalog must show that goods shown in the catalog are offered for sale. The purchaser does not know from the catalog that shows the goods, whether those goods are available for sale. There is no pricing information or direct ordering information. The catalog that shows the goods is also in French, making it even more difficult to establish whether ordering information is provided.

 

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.  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).  Section 45 requires use of the mark “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.03, 904.04(b), (c).

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; 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.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute 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, or photographs that show the mark on the actual goods or packaging.  See TMEP §§904.03 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under 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 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 for the travelling rugs.  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).

 

IDENTIFICATION OF GOODS 

 

The amended identification of goods is acceptable for the following International Classes: 3, 4, 6, 8, 11, 18, 25, 27 and 28.

 

The amended identification of goods is unacceptable for International Classes 16, 20, 21 and 24.

 

INTERNATIONAL CLASS 16:

 

The wording “wall art” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. The applicant has to include the material composition in the identification of goods.

 

The goods identified as “wall papers” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 27.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant classified the goods “seasonal gifts namely hourglasses” in International Class 16; however, the correct classification is International Class 9.  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 the previous 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 goods identified as “seasonal gifts namely Christmas stockings” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 

The goods identified as “Christmas ornaments” are properly classified in International Class 28 if they are “Christmas tree ornaments”. If the goods are not ornaments for the Christmas tree, the applicant must specify the type of ornament and the material composition of the goods.

 

The goods identified as “Christmas decorations” is unacceptable because the type of decoration is not specified. Depending on the type of decoration, the material composition of the goods may be relevant to the classification of the item.

 

The wording “Christmas figurines” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. For example, Christmas figurines made of plastic are in International Class 20; Christmas figurines made of ceramic are in International Class 21. The applicant has to include the material composition in the identification of goods.

 

 The wording “placemats” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  The identification of goods may be amended to “paper placemats”.

 

The wording “card holders” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  The applicant should specify the type of card holder, for example, “desktop business card holders”.

 

The goods identified as “decorative boxes made of leather or micro suede” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 18.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

INTERNATIONAL CLASS 20

 

The terminology “decorating accessories, namely, home accents, fountains, figurines, vases, trays, easels, plate holders, candle holders, digital frames, paperweight, artificial flowers, hourglasses” identifies goods in a more than one international class. The term “home accents” is too broad to identify the goods or the class in which they may be classified.

 

The applicant is informed that “fountains” are in International Class 11; “figurines” are classified according to their material composition; “vases” are in International Class 21; “trays” are in International Class 21, if they are serving trays; “easels” are in International Class 16; “plate holders” and “candle holders” are in International Class 21; “digital frames” are in International Class 9; “paperweights” are in International Class 16; “artificial flowers” are in International Class 26; “hourglasses” are in International Class 9.

 

The wording “decorative wall plaques” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. The applicant has to include the material composition in the identification of goods.  If accurate, the applicant may amend to “decorative wooden wall plaques”.

 

The wording “storage boxes” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. The applicant has to include the material composition in the identification of goods.  If accurate, the applicant may amend to “storage boxes made of wood or plastic”.

 

INTERNATIONAL CLASS 21

 

The goods identified as “electric hair brushes” are classified incorrectly, if they are electrically heated.  The proper classification for electric heated hair brushes is International Class 9.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). If applicant retains these goods and/or services in the application, then applicant must comply with the multiple-class requirements stated the previous 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 “trays” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. The applicant may amend these goods to “serving trays”.

 

The goods identified as “glass epergnes” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 20.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “glasses” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. The applicant may amend these goods to “glass beverageware”.

 

The wording “table trays” in the identification of goods must be clarified. If the goods are “tray tables”, they are classified in International Class 20. If the goods are serving trays, they are classified in International Class 21.

 

 The goods identified as “cutlery” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 8.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “sunshades” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  If the sunshades are “sunshade parasols”, they are in International Class 18. If the sunshades are for automobile windshields they are in International Class 12.

 

The goods identified as “fragrance diffusers” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 11.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 The goods identified as “decorative items for Christmas trees” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

The goods identified as “snow globes” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “Christmas figurines” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. For example, Christmas figurines made of plastic are in International Class 20; Christmas figurines made of ceramic are in International Class 21. The applicant has to include the material composition in the identification of goods.

 

The goods identified as “Christmas decorations made of glass” and “Christmas ornaments made of glass” are unacceptable because the type of decoration is not specified.  If the Christmas ornaments and decorations are for the Christmas tree, they are in International Class 28

 

The wording “trays” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. The applicant may amend these goods to “serving trays”.

 

The term “ceramic gift” is too broad to identify the goods or the class in which they may be classified.

 

The wording “decorative figurines” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  These goods are classified depending on the material composition of the goods. For example, decorative figurines made of plastic are in International Class 20; decorative figurines made of ceramic are in International Class 21. The applicant has to include the material composition in the identification of goods.

 

The terminology “decorative small glass, bottles containing saw dust memorabilia stained glass” should be clarified by deleting the comma after “glass” and inserting a semi colon after “memorabilia”. The terminology should be “decorative small glass bottles containing memorabilia; stained glass”.

 

The goods identified as “paperweight” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 16.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

INTERNATIONAL CLASS 24

 

 

The goods identified as “feather beds” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 20.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 

 

 

PUNCTUATION IN THE IDENTIFICATION OF GOODS

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.”  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. 

 

For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class.  However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable:  “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.”

 

MULTIPLE CLASS APPLICATIONS

 

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).

 

RESPONSE TO FINAL

 

If applicant does not respond within six months of the date of issuance of this final Office action, the goods specified above to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment. 

 

The application will then proceed for the following classes: 3, 4, 6, 8, 11, 18, 25, 27, 28 and all the goods in Classes 16, 20 ,21 and 24 not specified above as being unacceptable or misclassified. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

 

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Teresa Rupp/

Trademark Senior Attorney

Law Office 106

Phone - 571-272-9329

 

 

 

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 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 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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 10/13/2010 FOR

SERIAL NO. 77890738

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 10/13/2010 (or sooner if specified in the office action).

 

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.

 

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

 

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