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:

 

INTERNATIONAL REGISTRATION NO. 0974627.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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

 

SEARCH OF OFFICE’S DATABASE OF MARKS - NO CONFLICTING MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.  However, the applicant must address the following informalities:

 

CLAIM OF OWNERSHIP OF REGISTRATION

 

If applicant is the owner of U.S. Registration No. 2731327, 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. 2731327.

 

IDENTIFICATION OF GOODS

 

The identification of goods contains wording which is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  In particular:

 

1.  “Confectionery” – The wording is too broad and must be amended to state the common commercial name of the individual confectionery goods within the scope of Class 30, e.g., “candy” or “chocolate chips.”

 

2. “Chocolate products” – The wording is too broad and could encompass goods in more than one class, e.g., “chocolate milk” in Class 29.  Applicant must amend the wording to state the common commercial name of the individual products within the scope of Class 30, e.g., “chocolate powder” or “chocolate syrup.”

 

3. “Preparations for making the aforementioned products” – The wording is too broad and could encompass goods in more than one class, e.g., “milk” in Class 29.  Applicant must amend the wording to state the common commercial name of the individual preparations within the scope of Class 30, e.g., “cocoa powder” or “cocoa.”

 

Applicant may adopt the following identification, if accurate:   

 

“Confectionery, namely, (specify, e.g., candy); chocolate and chocolate products, namely, (specify, e.g., chocolate syrup); pastries, ice-cream, preparations for making the aforementioned products, namely, (specify, e.g., cocoa powder),” in Class 30.

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.

Moreover, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  TMEP §§1401.03(d), 1401.04 and 1904.02(b).

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

 

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.