UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79122849
MARK: HELLOFRESH
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Jade 1314. GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1141993
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
NO SIMILAR MARKS
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).
Applicant, however, must respond to the following requirements.
MARK DESCRIPTION
Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:
The mark consists of a grey seal with white circles around the border and a white and grey leaf and a black and white banner. The stylized wording “HELLO FRESH” appears in white on the banner.
IDENTIFICATION OF GOODS AND SERVICES
Therefore, applicant must remove the parentheses from the identification of goods and services and incorporate the parenthetical information into the description.
Applicant may adopt the following identification, if accurate:
“Paper, cardboard and goods made of these materials, not included in other classes, namely, _______________{indicate specific items, e.g., hat boxes of cardboard, cardboard packaging, boxes of paper}; printed matter, namely, ___________________{indicate specific items, e.g. printed calendars, printed forms, printed invitations}; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, _______________{indicate specific items, e.g., art pads, art paper, artists' brushes}; paint brushes; typewriters and office requisites except furniture, namely, _______________{indicate specific items, e.g., magnetic boards, file folders, desktop stationery cabinets}; printed instructional and teaching material except apparatus in the field of ______________{specify area of use, e.g., mathematics, social studies, computer science}; plastic materials for packaging, not included in other classes, namely, _______________{indicate specific type, e.g., plastic bags for packaging, plastic bubble packs for wrapping or packaging}; printers' type; printing blocks, printed vouchers, printed recipe cards” in International Class 016.
“Advertising; mediation and conclusion of commercial transactions for others, including within the framework of e-commerce; arranging of trading transactions and commercial contracts, including via the Internet, in the fields of bleaching and other preparations for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, fuels including motor spirit and illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides, hand tools and hand-operated implements, cutlery, apparatus for lighting, heating, cooking, refrigerating, drying apparatus, paper, cardboard and goods made from these materials, printed matter, photographs, stationery, materials for packaging, vouchers, serviettes, paper tablecloths, goods for decorating the table, goods of wood, cork, wicker, plastics, decoration accessories, decoration items and decoration material, seasonal decorations, celebration decorations, party and themed decorations, games and playthings, household and kitchen utensils and containers, combs and sponges, brushes, articles for cleaning purposes, glassware, porcelain and earthenware, yarns and threads, textiles and textile goods, bed and table covers, lace and embroidery, ribbons and braid, buttons, hook and eyes, pins and needles, artificial flowers, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and edible fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauce and condiments, spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic and non-alcoholic beverages, syrups and other preparations for making beverages, smokers' requisites” in International Class 035.
“Services for providing food and drink; providing temporary housing accommodation; food preparation services featuring meals for delivery or pick-up; providing information in the field of recipes and cooking from a computer database” in International Class 043.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
In this case, the wording merely describes the preparation of fresh foods. The descriptive nature of the term is bolstered by the attached evidence from BLS.gov, Post-Gazette.com and TheFarmKitchen.com, which uses the term FRESH to describe food prep services.
A “disclaimer” is a statement in the application record that applicant does not claim exclusive rights to an unregistrable component of a mark; a disclaimer does not affect the appearance of the mark or physically remove disclaimed matter from the mark. TMEP §§1213, 1213.10. An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “FRESH” apart from the mark as shown.
TMEP §1213.08(a)(i).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Robert J. Struck/
Robert J. Struck
Trademark Examining Attorney
Law Office 109
Robert.Struck@uspto.gov
571-272-1513
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.