Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1162422

 

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.

 

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

 

SUMMARY OF ISSUES that applicant must address:

 

• Entity.
• Drawing of mark.
• Mark description.
• Identification of goods.
• Claim of prior registrations.
• Significance of wording.
• Disclaimer.

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

ENTITY

Applicant must specify the names, legal entities and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b), 803.04.

 

DRAWING OF THE MARK

Applicant must submit a new drawing with the “®” federal registration symbol deleted because it is not part of the mark.  See TMEP §§807.02, 807.14(a).

 

DESCRIPTION OF MARK REQUIRED

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). 

 

Therefore, applicant must provide a description of the applied-for mark.  The following is suggested:

 

The mark consists of the wording “VILEDA PROFESSIONAL” in stylized font, with a “V” design in the place of the tittle in the letter “I” of the wording “VILEDA” therefor.  The entire mark is in red color.

 

IDENTIFICATION OF GOODS

The following wordings in the identification of goods are indefinite and must be clarified because as written they are vague, confusing and/or overbroad: “moist-impregnated with a detergent for cleaning disposable cloths”; “steel wool pads with soap”; “vehicles”; “apparatus for locomotion”; “bin liners made of plastic or paper”; “seating aids”; “sorting containers of plastic for laundry”; “articles for cleaning purposes, especially household cloths, window cloths made of leather and artificial leather, cloths for washing dishes, cloths for cleaning surfaces, dusters, scouring cloths, multi-purpose cloths, floor cloths, microfiber cloths, sponge cloths, cloths made of nonwovens, cloths made of woven or knitted fabrics, dry disposable cloths, scouring pads made of nonwoven material with and without sponge section”; “steel wool for cleaning, especially steel wool cleaners with and without handles, made of foamed plastic”; “dustpans”; “household or kitchen utensils, especially manually operated, non-electrical mechanical cleaning devices”; “brushes”; “devices for wringing out mops”; “window cleaning devices”; “water wipers”; “household gloves made of latex or plastic”; “disposable gloves for household or gardening purposes”; “drying devices for laundry”; “drying racks”; “rotary clothes dryers”; “drying mounts”; “clothes-pegs”; “sleeve boards”; “ironing board supports”; “ironing cloths”; “iron cleaning cloths”; “containers for household or kitchen, especially water buckets, pedal bins, waste bins”; “non-metallic parts for manually operated, non-electrical mechanical cleaning devices, especially handles, hand grips, connecting parts, joints, couplings”; “washing lines” and “table cloths.”  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, the trademark examining attorney is unable to suggest alternative wording because the wordings that follow in International Class 20, 21 and 22 are unclear and do not appear to describe any goods in those classes:  “laundry baskets of plastic”; “non-metallic parts for manually operated, non-electrical mechanical cleaning devices, especially handles, hand grips, connecting parts, joints, couplings” and “washing lines.”  See id. 

 

Applicant must amend this wording to clarify the identification.  However, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing class to another.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). 

 

Accordingly, any amendment must identify goods within International Classes 20, 21 and 22 only.  See TMEP §§1402.01(c), 1402.07(a).  The scope of the identification for purposes of permissible amendments is limited by the assigned international class.  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c). 

 

In the alternative, applicant may respond by deleting the unacceptable wording from the identification.  See TMEP §1904.02(c)(iv).  However, once an application has been expressly amended to delete goods and/or services, those items generally may not be later re-inserted.  TMEP §1402.07(e).

 

Applicant may also submit a request to correct the identification in the international registration.  Such a request must be filed with the International Bureau in accordance with the requirements of the Common Regulations under the Madrid Agreement and Protocol.  TMEP §1906.01(f). 

 

Requests for correction and notices of correction are not considered responsive to an Office action issued by the USPTO.  Applicant must file a complete response within six months of the date of issuance of the Office action to avoid abandonment of the U.S. application.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03.

 

Applicant may adopt the following identification, if accurate: 

 

Pre-moistened disposable cloths impregnated with a detergent for cleaning; steel wool pads impregnated with soap for cleaning in International Class 3

 

Vehicles, namely, [indicate common commercial name(s) or further describe nature and function of goods, e.g., automobiles]; apparatus for locomotion, namely, [indicate common commercial name(s) or further describe nature and function of goods, e.g., automobiles]; trolleys, especially cleaning trolleys in International Class 12

 

Trash can liners made of plastic or paper in International Class 16

 

Seating aids, namely, [indicate common commercial name(s) or further describe nature and function of goods, e.g., booster seat]; drying devices for laundry, namely clothes hangers; plastic containers for commercial use for laundry sorting purposes; laundry baskets of plastic in International Class 20

 

Articles for cleaning purposes, namely, cleaning cloths for household use, window cleaning cloths made of leather and artificial leather, cloths for washing dishes, cloths for cleaning surfaces, dusters, scouring cloths, multi-purpose wiping cloths for use with infants and toddlers, floor cleaning cloths, microfiber cleaning cloths, cleaning sponges, non-woven cleaning cloths, cleaning cloths made of woven or knitted fabrics, dry disposable cleaning cloths, scouring pads made of nonwoven material with and without sponge section; steel wool for cleaning made of foamed plastic with or without handles; sponges for household purposes, especially plastic-coated scouring sponges and cleaning sponges made of viscose or plastic; dust-pans; manually operated and non-electrical mechanical household or kitchen cleaning devices, namely, brooms, dusting brushes, mops, mop wringers, toilet brushes, holders for toilet brushes, window cleaners in the nature of a combination squeegee and scrubber, cloth for wiping out water, household gloves made of latex or plastic for general use; disposable gloves for home use; disposable gardening gloves; gardening gloves; drying devices for laundry, namely, clothes drying racks, rotary clothes drying racks, [specify common commercial name or further describe nature and function of “drying mounts”], clothes pegs, ironing boards, ironing boards for ironing sleeves, [specify common commercial name or further describe nature and function of “ironing board supports”], [specify common commercial name or further describe nature and function of “ironing cloths”], iron cleaning cloths; containers for household or kitchen, namely, water buckets, pedal dust bins and waste baskets in International Class 21

 

Table cloths of textile in International Class 24

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services.  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Classification for Goods/Services Cannot Be Changed (Advisory)

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).

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

For assistance with identifying and classifying goods and 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.

 

OWNERSHIP OF PRIOR REGISTRATION

If applicant owns U.S. Registration Nos. 1988943 and 2239840 (registration information attached hereto), then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration Nos. 1988943 and 2239840.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant must specify whether the wording “VILEDA” has any significance in the cleaning, manufacturing, vehicular and/or household products trade or industry or as applied to the goods described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

DISCLAIMER REQUIRED

Applicant must disclaim the descriptive wording “PROFESSIONAL” apart from the mark as shown because it merely describes a quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); TMEP §§1213, 1213.03(a). 

 

Specifically, the attached evidence from an online dictionary shows this wording means “or, relating to, engaged in, or suitable for a profession” and/or “conforming to the standards of a profession.”  See attachment of http://education.yahoo.com/reference/dictionary/entry/professional showing meaning of the wording.  When used in the context of various goods, the term “professional” would immediately point to the ordinary consumer a quality, characteristic, function, feature, purpose, or use of such goods that reflects the literal meaning of these goods.  In fact, applicant on its own website describes that its goods are “for professional users” (emphasis added).  See attachment of http://vileda-professional.com/en-CA/company/about/ showing significance of this wording in connection with applicant’s goods.  Therefore, the wording merely describes applicant’s goods.

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP§1213.  An unregistrable component of a mark includes wording and designs that are merely descriptive or generic of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.

 

The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PROFESSIONAL” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

RESPONSE TO OFFICE ACTION

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

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).

 

HIRING OF TRADEMARK COUNSEL (ADVISORY)

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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. 

 

 

 

 

/Dawn Han/

Examining Attorney

Law Office 107

(571) 272-9432

dawn.han@uspto.gov

 

 

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.