UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 10/17/2014

 

 

INTERNATIONAL REGISTRATION NO. 1211585

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 1, 2014.

 

In a previous Office action dated August 19, 2014, applicant was required to satisfy the following requirement:  amend the identification of goods and provide a translation of the mark.

 

Based on applicant’s response, the trademark examining attorney withdraws the following: the requirement for a translation of the mark.  See TMEP §§713.02, 714.04.

 

However, a portion of applicant’s amended identification of goods remains indefinite.

 

Additionally, and upon further review of the application record, the examining attorney has determined that an additional portion of the identification is indefinite; a portion that the examining attorney did not identify in the initial Office action.  Consequently, a portion of the identification of goods requires further clarification and the Office apologizes for any inconvenience to the applicant as a result to the untimeliness of this additional requirement. 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Goods – Partial Requirement

 

 

Requirement

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified because the “packaging containers” of the applicant identified in Class 06 must be limited to goods of metal or primarily of metal.  See TMEP §1402.01.  Further, the applicant uses the term “or” with respect to one of its goods identified in Class 16.  This wording is indefinite because it is unclear as to whether the applicant is providing one of the goods or both of the goods.

 

Applicant may adopt the following identification, if accurate (note that items in brackets and strikethroughs reflect suggested deletions whereas suggested additions are represented in capital letters):

 

Int. Class 06:

 

Strips and foils and lengths thereof made of metals, namely, aluminum, aluminum alloys, iron or ferrous alloys; multi-layer strips and films and lengths thereof made mainly of metals namely, aluminum, aluminum alloys, iron or ferrous alloys in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper, all of the aforementioned films and foils being for packaging purposes; packaging containers in the form of boxes, pouches, sacks, sachets, wraps and bags made from the strips, foils, films and lengths thereof being made primarily of aluminum, aluminum alloys, iron or ferrous alloys; closures and seals for packaging in the form of foils, films and lengths thereof made primarily of aluminum, aluminum alloys, iron or ferrous alloys; packaging foils of metal; packaging containers of metal for commercial and industrial use; container closure means of metal; cans of metals, can closures of metal; multi-layer strips and films and lengths thereof made mainly of metals namely, aluminum, aluminum alloys, iron or ferrous alloys in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper, all of the aforementioned strips and films and lengths thereof including a valve; packaging containers PRIMARILY OF METAL, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals and metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper; packaging containers PRIMARILY OF METAL, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper and featuring a valve; packaging containers PRIMARILY OF METAL, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals and metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper and featuring a valve, all the foregoing packaging containers for use in packing and wrapping chunky, granulated, ground, and powdery materials, and, roasted ground coffee, and roasted coffee beans

 

Int. Class 16:

 

Containers, namely, boxes of plastic, paper, and, cardboard; Containers, namely, paper, plastic and cardboard pouches for packaging; Containers, namely, sacks, sachets, and, wraps, all being in the nature of bags of paper, plastic and cardboard for packaging; Containers, namely, bags of paper, cardboard and plastic for packaging; single and multi-layer films of plastic materials for packaging purposes; single and multi-layer films of plastic materials for packaging purposes, all of the foregoing packaging films featuring a valve; single [or] AND multi-layer films of plastic materials for packaging purposes, all of the foregoing packaging films featuring a valve, and all of the foregoing packaging films for use in packing or wrapping chunky, granulated, ground, and powdery materials, roasted ground coffee and roasted coffee beans; multi-layer films, primarily of plastic for packaging purposes; layer materials, namely, films and sheets of plastics, paper, and, cardboard, all for packaging purposes; adhesive bands for stationery and household purposes; adhesive strips, namely, adhesive strips for stationery purposes, adhesive strips for office use, and adhesive strips for packaging use

 

Int. Class 17:

 

Semi-finished laminates, namely, laminated composite and multi-layer sheets and films comprising primarily one layer of plastic and at least one layer of plastic with at least one layer of foil base metals for use in the manufacture of packaging; semi-finished strips and films primarily of plastic and being single and multi-layers of plastic combined with metal foils, metalized plastic foils, lacquer coatings, paper, and cardboard, all for use in the manufacture of container covers, seals, and closures; packaging materials of plastic, namely, plastic sheets for the manufacture of seals and valves for preserving the freshness and aroma of ground and bean coffee after roasting

 

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

Further, in a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

Partial Abandonment – Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: 

 

Int. Class 06:

 

packaging containers, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals and metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper; packaging containers, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper and featuring a valve; packaging containers, namely, boxes, pouches, sacks, sachets, wraps and bags and featuring container closures of metal and metal foils and of metals and metal foils in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper and featuring a valve, all the foregoing packaging containers for use in packing and wrapping chunky, granulated, ground, and powdery materials, and, roasted ground coffee, and roasted coffee beans

 

Int. Class 16:

 

single or multi-layer films of plastic materials for packaging purposes, all of the foregoing packaging films featuring a valve, and all of the foregoing packaging films for use in packing or wrapping chunky, granulated, ground, and powdery materials, roasted ground coffee and roasted coffee beans. 

 

The application will then proceed with the following goods only: 

 

 

Int. Class 06:

 

Strips and foils and lengths thereof made of metals, namely, aluminum, aluminum alloys, iron or ferrous alloys; multi-layer strips and films and lengths thereof made mainly of metals namely, aluminum, aluminum alloys, iron or ferrous alloys in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper, all of the aforementioned films and foils being for packaging purposes; packaging containers in the form of boxes, pouches, sacks, sachets, wraps and bags made from the strips, foils, films and lengths thereof being made primarily of aluminum, aluminum alloys, iron or ferrous alloys; closures and seals for packaging in the form of foils, films and lengths thereof made primarily of aluminum, aluminum alloys, iron or ferrous alloys; packaging foils of metal; packaging containers of metal for commercial and industrial use; container closure means of metal; cans of metals, can closures of metal; multi-layer strips and films and lengths thereof made mainly of metals namely, aluminum, aluminum alloys, iron or ferrous alloys in combination with at least one layer of non-metallic materials namely, plastics, layers of lacquer and paper, all of the aforementioned strips and films and lengths thereof including a valve

 

Int. Class 16:

 

Containers, namely, boxes of plastic, paper, and, cardboard; Containers, namely, paper, plastic and cardboard pouches for packaging; Containers, namely, sacks, sachets, and, wraps, all being in the nature of bags of paper, plastic and cardboard for packaging; Containers, namely, bags of paper, cardboard and plastic for packaging; single and multi-layer films of plastic materials for packaging purposes; single and multi-layer films of plastic materials for packaging purposes, all of the foregoing packaging films featuring a valve; multi-layer films, primarily of plastic for packaging purposes; layer materials, namely, films and sheets of plastics, paper, and, cardboard, all for packaging purposes; adhesive bands for stationery and household purposes; adhesive strips, namely, adhesive strips for stationery purposes, adhesive strips for office use, and adhesive strips for packaging use

 

Int. Class 17:

 

Semi-finished laminates, namely, laminated composite and multi-layer sheets and films comprising primarily one layer of plastic and at least one layer of plastic with at least one layer of foil base metals for use in the manufacture of packaging; semi-finished strips and films primarily of plastic and being single and multi-layers of plastic combined with metal foils, metalized plastic foils, lacquer coatings, paper, and cardboard, all for use in the manufacture of container covers, seals, and closures; packaging materials of plastic, namely, plastic sheets for the manufacture of seals and valves for preserving the freshness and aroma of ground and bean coffee after roasting

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

 

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.

 

 

/Paul C. Crowley/

Examining Attorney

Law Office 112

(571) 272-8846

paul.crowley@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/17/2014 FOR U.S. APPLICATION SERIAL NO. 79150193

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/17/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.