Offc Action Outgoing

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 referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results

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).

Legal Nature and Place Incorporated Omitted

Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation. See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of international registrations to the United States”). See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.

Color Claim

Applicant has submitted a color drawing and provided a mark description referencing color, but has not provided the required color claim in the proper form. Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). Generic color names must be used to identify the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Therefore, applicant must provide the required color claim. The following is suggested, if accurate: “The colors green, white, and blue are claimed as a feature of the mark.” TMEP §807.07(a)(i).

Mark Description

Applicant must submit an accurate and concise description of the literal and design elements in the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. In this instance, the mark description has been placed in the wrong field and it must be moved to the proper location and the wording amended. The following is suggested, if accurate:

The mark consists of the wording PINNERTEST. PNNER is in blue and TEST is in green. In front of the term PINNER is a green circle with a white check mark inside.

Identification of Goods

The identification of goods is indefinite and must be clarified because the goods need to be more clearly and precisely described. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

Class 5: Pharmaceutical and veterinary preparations for medical purposes for {specify disease or condition to be prevented or treated or the health goal to be achieved}; chemical preparations and chemical elements for pharmaceutical purposes, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}; dietary supplements, including those adapted for medical purposes; nutritional supplements; dietary supplements for slimming purposes; food for babies; herbs and herbal beverages adapted for medicinal purposes; preparations for use in dentistry, other than tools and apparatus, namely, {specify common commercial name of goods intended in Class 5}; sanitary preparations for medical use; feminine hygienic pads; feminine hygienic tampons; medical plasters; materials for dressings; diapers, namely, those made of paper and textiles; preparations for destroying vermin, namely, {specify common commercial name of goods intended in Class 5, e.g., pesticides}; fungicides, herbicides; deodorants, other than for human beings or for animals, namely, air and car deodarants; air deodorizing preparations; all purpose disinfectants; antiseptics; detergents for medical purposes;

Class 9: Measurement apparatus, equipment and indicators including those for scientific and laboratory use, laboratory equipment and apparatus, namely, {specify common commercial name of goods intended in Class 9}; apparatus for recording, transmission or reproduction of sound or images; data processing apparatus; telecommunication apparatus, namely, {specify common commercial name of goods intended in Class9}; sound or image reproducing apparatus; computer peripheral devices; blank magnetic and optic data carriers and computer software and programmes recorded thereto, for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; downloadable and recordable electronic publications, in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; encoded magnetic and optic cards; antennas, satellite antennas, amplifiers for antennas, parts of the aforementioned goods; electronic {specify type of tickets intended, e.g., parking lot} ticket dispensers; automatic teller machines (ATM); electronic components used in the electronic parts of machines and apparatus; counters and quantity indicators for measuring the quantity of consumption; automatic time switches; clothing for protection against accidents, irradiation and fire, namely, {specify type of clothing intended in Class 9}; safety vests and life-saving apparatus and equipment, namely, {specify type of goods intended in Class 9}; eyeglasses; sunglasses; optical lenses and cases, containers, parts and components thereof; apparatus and instruments for conducting, transforming, accumulating or controlling electricity, namely, {specify type of goods intended in Class 9}; electric cables and electrical power supplies; batteries, electric accumulators; alarms and anti-theft alarms, other than for vehicles, namely, anti-intrusion and burglar alarms; electric door bells; signalling apparatus and instruments, luminous or mechanical signs for traffic use; fire extinguishing apparatus, fire engines, fire hose and fire hose nozzles; radar apparatus, sonars, night vision apparatus and instruments, namely, {specify goods intended in Class 9}; decorative magnets;

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, namely, {specify common commercial name of goods intended in Class 10}; furniture especially made for medical purposes; artificial limbs and prostheses for {specify use}; medical orthopaedic articles, namely, {specify common commercial name of goods intended in Class 10}; surgical gowns and surgical sterile sheets; adult sexual aids, namely, {indicate type, e.g., artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas}; condoms; babies' bottles; babies' pacifiers; teats; teethers for babies.

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an 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 and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the 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 international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

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.

The services in Class 44 do not require an amendment.

Contact Information

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.

/Katina S. Mister/

Katina S. Mister

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

571-273-8889 (Fax)

katina.mister@uspto

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.