UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79154323
MARK: EI
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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: Dutchi Group B.V.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1221412
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.
NO CONFLICTING 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).
DESCRIPTION OF THE MARK
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of an oval egg shape to the left of the letters “EI”.
IDENTIFICATION OF GOODS
In class 3, the term “dental and oral cleaning” is indefinite and does not identify the common commercial name for any goods. The applicant must specify the common commercial name for these goods, e.g. toothpaste.
Therefore, applicant must remove the parentheses from the identification of goods and incorporate any parenthetical information into the description.
In class 9 the following wording is indefinite and needs further clarification: electronic and electrical apparatus and instruments for babies and infants; DECT monitors; electronic publications provided on-line from databases or the internet, memory carriers, interactive compact discs and cd-roms; software for recording, transmitting, receiving, amplifying and reproducing apparatus; computer software for digital cameras; touch surfaces and controls for use with computers and computer games; software for playing interactive educational programs, videos and computer games; joysticks
Particular wording in the identification in the application is indefinite and must be clarified. See TMEP §§1402.01, 1904.02(c)(iii). 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, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 9 is indefinite and does not appear to describe any goods and/or services in that class: “instructional and teaching material in the form of computer-based teaching and learning toys for children.” See TMEP §1904.02(c)(iii).
An acceptable identification of goods and/or services is required in a U.S. application based on Trademark Act Section 66(a). See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01(c). For Section 66(a) applications, the scope of the identification for purposes of amendment is limited by the international class assigned to the goods and/or services 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). Additionally, 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 §§1402.06 et seq., 1402.07.
Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any future amendment to the identification must identify goods and/or services within International Class 9 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes classification by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).
In class 10 the following wording is indefinite and requires further clarification: “soothers, pacifiers and teethers; containers adapted for feeding babies and children; incubators; apparatus for use in breast-feeding, including devices for the treatment and correction of inverted nipples; nipple protectors, cooling pads for breasts, heating pads for breasts; thermometers, sterile equipment and components.”
In class 11 the following wording is indefinite and requires further clarification: “Apparatus and instruments for sterilising, heating, lighting, cooking, refrigerating, drying or for sanitary purposes; heaters and warmers for feeding bottles, foodstuffs, liquids and solids; apparatus for lighting; electric torches; electric blanket (non-medical use); feet warmers (electrical or non-electric).”
In class 12 the following wording is indefinite and requires further clarification: “Transport, including prams, pushchairs, buggies, bicycles, scooters, bicycle trailers, golf carts; parts for all the aforesaid goods, not included in other classes; safety seats as bike seats; footmuffs for strollers.”
In class 18 the term “textile fabrics and textile straps for carrying babies and children not included in other classes” is indefinite.
In class 20 the following wording is indefinite and requires further clarification: closet systems, supports for bath tubs with or without bath; products of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, tortoiseshell, amber, mother of pearl, meerschaum and substitutes for all these materials, or of plastics, not included in other classes; parts, accessories, supplies and accessories for the aforesaid goods, not included in other classes, such as seats, backrests and cushions for chairs.”
In class 21 the following goods are indefinite and require further clarification: “Tableware and household utensils; jars; for bottles of cleaning instruments; basins and trays for babies; nappy, cotton jars, cotton boxes; brushes; sponges; powder shakers, cups and other baby and toddler tableware, not of precious metal; jars, pots, baby baths and other similar toilet and nursing supplies and utensils for babies and children, not included in other classes; containers for use in sterilizing baby feeding bottles and closures for such containers; brushes.”
In class 24 the identification of services is indefinite and must be clarified because it contains the open-ended wording “including.” See TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”
Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
In addition the following wording is indefinite and requires further clarification: “fabric home decorations; substances cloths; bedding; blankets for furniture.”
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 in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods.
In addition to the term “clothing” the following goods are indefinite and require further clarification: “headgear; baby and children”
In class 28 the following wording is unclear and required further clarification: “Games and playthings, including educational games and toys; music toys; riding toys; building blocks, soft toys, toys, sporting goods; gymnastic and sporting articles not included in other classes, including climbing and stretching and playing objects; rattles; musical mobiles (toys).”
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 in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). 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); see TMEP §§1402.07(a), 1904.02(c).
The following substitute wording is suggested, if accurate. Please note where additional information is required.
Class 3: Soaps, shower and bath gel, shower gel and bubble bath; perfumery, cosmetics; essential oils; hair lotions and hair care preparations, hair shampoo; dental and oral cleaning preparations, namely, toothpaste; cotton buds for cosmetic use; non-medicated salts, oils and other additives for use in bath and shower; eau de toilette, eau de cologne; cosmetic creams, powders, lotions, milks and oils for the care and cleaning of skin, body, hands and feet; paper tissues, cloth wipes and tissues impregnated with lotion or perfume
Class 8: Cutlery, namely, knives, forks and spoons for babies and children; nail clippers, electric or non-electric nail files; manicure and pedicure sets
Class 9: Baby monitors; baby scales; electronic and electrical apparatus and instruments for babies and infants, namely, (specify the common commercial name for the apparatus and instruments, e.g. infant movement alarms; digital photo frames, DECT baby monitors, thermometers and electronic thermometers, other than for medical use; downloadable electronic publications, namely, (specify nature of publication, e.g. magazines) in the field of (specify subject matter of the publications, e.g. parenting) provided on-line from databases or the internet, memory carriers, interactive compact discs and cd-roms; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, readers and recorders for audio and/or video discs; portable digital music recorders/players; software for recording, transmitting, receiving, amplifying and reproducing apparatus (applicant must specify the function of the software, e.g. computer operating software for recoding, transmitting, receiving, amplifying and reproducing apparatus); digital cameras; digital video cameras; computer software for digital cameras (specify function of the software, e.g. computer operating software for digital cameras); keyboards, touch surfaces and controls for use with computers and computer games, namely, (specify common commercial name for the surfaces and controls, e.g. touch pads, panels and screens); software for playing interactive educational programs, videos and computer games, namely, children’s education software, video game software and computer game software; trackballs, and computer joysticks;
Class 10: Feeding bottles, handles for baby bottles; teats; soothers, namely, (specify common commercial name, e.g. baby pacifiers and teething rings); cups and dishes adapted for feeding babies and children; incubators for babies; breast pumps; apparatus for use in breast-feeding, including devices for the treatment and correction of inverted nipples, namely, (specify common commercial name for the apparatus and devices); nipple protectors, cooling pads for breasts, heating pads for breasts all for use in breast-feeding; thermometers for medical purposes, sterile equipment and components, namely (specify common commercial name, e.g. surgical sterile sheets)
Class 11: Apparatus and instruments for sterilising, heating, lighting, cooking, refrigerating, drying or for sanitary purposes, namely, (specify common commercial name for the apparatus and instruments, e.g. baby bottle sterilizers, heating installations, electric lighting fixtures, cooking ovens, refrigerators, clothing drying machines, sanitizing apparatus using ultraviolet light for sanitizing baby bottles not for medical purposes; eclectic heaters and warmers for baby feeding bottles and liquid and solid baby foodstuffs; apparatus for lighting; lamp chimneys; electric torches for lighting; electric blanket not for medical purposes; heating installations; bathtubs; electric feet warmers
Class 12: Transport, namely prams, pushchairs, baby buggies, bicycles, scooters, bicycle trailers, motorized golf carts; structural parts for all the aforesaid goods, not included in other classes (must specify that the parts are structural parts or specify the common commercial name for the parts); bicycle safety seats for infants and children; baby and infant car seats; hoods for prams and buggies; covers for car seats; trolleys; safety belts for child seats and strollers; undercarriages for prams; footmuffs specially adapted for use with for strollers; aforementioned products intended for infants and children under 6 years
Class 18: Suitcases, shopping trolley bags, travel bags, backpacks, nursing bags for babies, diaper bags for babies; umbrellas and parasols, including parasols for prams and buggies; baby carriers worn on the body made of textile fabrics and textile straps for carrying babies and children not included in other classes; pouch baby carriers
Class 20: Furniture including chairs, beds, cots, wardrobes, cabinets, closet systems, namely, prefabricated closet organization systems made of wood and metal, supports for bath tubs with or without bath, namely, (specify common commercial name e.g. portable baby bath seats for use in bath tubs), chests and drawers; beds items , namely, mattresses, box spring mattresses and pillows; mirrors, bathroom mirrors; products of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, tortoiseshell, amber, mother of pearl, meerschaum and substitutes for all these materials, or of plastics, not included in other classes, namely, (specify the common commercial name for the goods, e.g. door stops of wood); parts, accessories, supplies and accessories for the aforesaid goods, not included in other classes, namely, seats, backrests and cushions for chairs; sleeping bags
Class 21: Tableware, namely, (specify common commercial name, e.g. tea services) and household utensils, namely, (indicate specific items, e.g. pot and pan scrapers, rolling pins, spatulas, turners, whisks); jars, namely, (specify type, e.g. cookie jars); bottles of cleaning instruments, namely, empty spray bottles; basins and trays for babies, namely, (specify common commercial name); nappy cotton jars, namely, (specify common commercial name, e.g. diaper pails), cotton ball dispensers, soap boxes, brushes, namely, (specify type, e.g. brushes for washing up, hair brushes), sponges, namely, (specify type, e.g. souring sponges), combs; powder shakers, namely, (specify common commercial name), cups and other baby and toddler tableware, not of precious metal, namely (specify common commercial name for the tableware, e.g. plastic plates); glass storage jars, pots, baby bathtubs and other similar toilet and nursing supplies and utensils for babies and children, not included in other classes, namely, (specify common commercial name, drinking cups for infants and parts and fittings therefor, namely, valves and lids sold as a unit); non-electric bottle warmers for babies; baby hair brushes and combs; baby and kids plates; holders for beverage containers; cups for feeding, namely, drinking cups for babies and children; containers for household use to sterilize baby feeding bottles and closures for such containers; heat insulating containers and carriers for feeding bottles for babies; brushes, namely, (specify type, e.g. cleaning brushes for household use)
Class 24: Textiles, namely, bed linen, covers for strollers and cribs, namely, (specify common commercial name, e.g. baby blanket and crib sheets) and upholstery, namely, crib sheets for playpens for babies, bed blankets, bedspreads; towels, fabric home decorations, namely, (specify common commercial name, e.g. pillow shams); substances cloths, namely, (specify common commercial name, e.g. cotton cloth); bedding, namely, (specify type, e.g. bed sheets, bed blankets); blankets for furniture, namely, unfitted fabric furniture colvers; washing gloves; aforesaid goods for babies and children under 6 years
Class 25: Clothing, namely, (specify type, e.g. baby layettes for clothing, bottoms for babies and children, tops for babies and children); footwear; headgear, namely, (specify type, e.g. caps, hats); underwear; belts; footmuffs; aforesaid goods intended for babies and children under 6 years
Class 28: Games and playthings, including educational games and toys, namely, (specify common commercial name, e.g. educational card games); toy music boxes; music toys, namely, (specify common commercial name, e.g. toy pianos, sold as a unit with printed books in the field of music education); ride -on toys; pull and push toys; toy building blocks, soft sculpture toys, toys, namely, (specify common commercial name, e.g. bath toys), sporting goods, namely, (specify common commercial name, e.g. baseball bat); dress to play with, for babies and children; puzzles; gymnastic and sporting articles not included in other classes, including climbing and stretching and playing objects, namely, (specify common commercial name, e.g. gymnastic horizontal bars, gymnastic apparatus); baby rattles; bath toys; toy musical mobiles; jungle gyms for babies; video game machines
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 active 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).
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.
/Jennifer M. Martin/
Examining Attorney
Law Office 116
(571) 272-9193
Jennifer.Martin@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.