UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/703237

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.

Search

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, the applicant must respond to the following informalities.

 

Prior Registration

 

If applicant is the owner of U.S. Registration No. 0629913, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 0629913.

Identification and Classification of Goods

 

The identification of goods in Class 9 is acceptable.

 

However, the wording “[knife and tool sharpeners, beaters, knives, dough hooks, oil and liquid dispensers, juice extractors, and tray supports;]” in the identification of goods in Class 7 needs clarification.  TMEP §1402.01.  In this regard, applicant must remove any parentheses or brackets from the identification of goods and/or services and incorporate the parenthetical information into the description.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is only permitted in identifications 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.  Moreover, brackets are used by the Office to identify goods or services that have been deleted from a registration.

 

The wording in brackets must be clarified so that it is clear that the items are part of the attachments for the food mixers, if accurate.  If they are separate items, then applicant must clarify if they are electric or power operated (in Class 7) or hand operated (Class 8).  If they are separate items, then the nature or common commercial names for the dough hooks, oil and liquid dispensers and tray supports must be specified.  Finally, applicant must clarify the nature of the tray supports.

 

Applicant may adopt the following identification for Class 7, if accurate:

 

Food slicing machines, food cutting machines, vegetable peeling machines, food mixers; attachments for electric food mixers, namely, meat and food choppers, fruit and vegetable slicers, electric knife and tool sharpeners, beaters, knives, dough hooks, oil and liquid dispensers, juice extractors, and tray supports in the nature of ___________ [clarify common commercial name]; and food machine supporting stands, in Class 7.

 

For assistance with identifying 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.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

Additionally, please note that fees are based upon the number of classes covered in an application.  If applicant adopts a description of goods/services covering additional classes, then an additional fee will be required.  In this regard, applicant should note the following multiple-classification requirements.

Multiple-classification Requirements

 

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 with the classes listed in ascending numerical order;

 

(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 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; 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; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(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) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  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, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

Specimens of Use Required

 

This application does not include a specimen for any of the identified class(es) of goods.  A specimen showing use of the mark in commerce for each class of goods is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).  TMEP §904. 

 

Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) for each class of goods showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.56(a); TMEP §§904.01 et seq. and 904.09.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

Declaration

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

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 there from, declares that the 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)

Substituting Basis to Overcome Specimen Requirement

 

If applicant cannot presently comply with the requirement for a specimen as required for the Section 1(a), use basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert a Section 1(b), intent-to-use basis.  If so, applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.  Please note that if even if applicant amends the application to assert a basis under Section 1(b), an allegation of use and supporting specimen will eventually be required before the mark may be registered. 

Declaration for Basis Substitution

 

If applicant chooses to amend the basis to Section 1(b), intent-to-use, applicant may use the following declaration:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

The undersigned, being hereby warned that willful false statements and the like so made 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 resulting registration, declares that the facts set forth in this application are true; 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)

 

Conditional Refusal

 

Pending an adequate response to the above, registration is refused because there is no specimen of record to show use of the proposed mark as a trademark/service mark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.

Significance of Mark

 

Applicant must specify whether the wording “UNIVEX” has any significance as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).

Translation Required

 

Applicant must submit an English translation of all foreign wording in the mark, if any.  37 C.F.R. §2.61(b); TMEP §809.  The following translation statement is suggested:  The English translation of the word “UNIVEX” in the mark is “__________________ [specify].”

 

If applicant has any questions, please do not hesitate to contact the undersigned.

 

/Maureen Dall/

 

Maureen L. Dall

Trademark Attorney, Law Office 110

United States Patent and Trademark Office

Phone: 571-272-9714

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.