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

 

Registration previously was refused based on requirements for 1) a claim of ownership of a prior registration, 2) an acceptable identification of goods, 3) specimens of use, 4) information concerning the significance of the mark, and 5) a translation of the mark, if any.

 

Applicant provided a claim of ownership, amended the identification, provided specimens, provided information concerning the mark and provided translation information.  The claim of ownership, specimens, information concerning the mark and translation information are accepted.  However, further clarification of the identification is required.

 

Additionally, applicant has now provided a claim of distinctiveness under Section 2(f) based both on use for over five years and based on a registration for a similar mark.  It is unclear why these claims were provided and applicant must clarify this.

 

New Issue – Distinctiveness Claims

 

Applicant must either delete the statements of acquired distinctiveness from the application or explain why it believes that a claim of distinctiveness is necessary, because the mark appears to be inherently distinctive.  Trademark Act Section 2(f), 15 U.S.C. §1052(f); TMEP §1212.02(d).  A claim of distinctiveness is not needed in this case.

Identification and Classification of Goods

 

The identification in Class 9 is acceptable.

 

With respect to Class 7, applicant must clarify the nature of the foods mixers that its attachments are for, e.g., electric.  TMEP §1402.01.  Applicant also must adopt the appropriate international classification number(s) for the goods and services identified in the application.  The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq.  This classification system divides all goods and services into one of 45 classifications for administrative purposes.  In this regard, please note that attachments for electric food mixers are in Class 7.  However, attachments that are not for electric food mixers are in other classes, e.g., knives are in Class 8.

 

Please note that while “mixers” is acceptable in Class 7 to identify machines for the kitchen, applicant may wish to indicate that its food mixers (and not just its attachments) are electric.  This would aid in clarifying the goods.

 

Applicant may adopt the following identification, if accurate:

 

Food slicing machines, food cutting machines, vegetable peeling machines, electric food mixers; attachments for electric food mixers, namely, meat and food choppers, fruit and vegetable slicers, knife and tool sharpeners, beaters, knives, dough hooks, oil and liquid dispensers, juice extractors, and tray supports in the nature of holders for holding the aforementioned electric food mixer attachments onto electronic food mixers; 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).

 

Please note that the specimen(s) of record are acceptable for class(es) 7 and 9.

 

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

 

/Maureen Dall/

 

Maureen L. Dall

Trademark Attorney, Law Office 117

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.