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. 79213169
MARK: NUTELLA
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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: FERRERO S.P.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1357583
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.
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
COLOR CLAIM DISAGREES WITH MARK DRAWING – CLARIFICATION REQUIRED
In the present case, amending the mark drawing to agree with the color claim would not be considered a material alteration. However, any other amendments to the drawing will not be accepted if such changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
Therefore, applicant must submit one of the following:
(1) A substitute color drawing that shows the mark in the colors specified in the color claim. TMEP §807.07(c).
(2) A corrected color claim, and matching mark description, that agrees with the colors shown on the drawing. 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). The following color claim and mark description, reflecting the current drawing, are suggested:
Color claim: The colors black and red are claimed as a feature of the mark.
Mark description: The mark consists of the wording "NUTELLA" in stylized lettering, with the letter "N" featured in black and the remaining letters "UTELLA" featured in red.
MARK DESCRIPTION REQUIRED
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the wording "NUTELLA" in stylized lettering, with the letter "N" featured in black and the remaining letters "UTELLA" featured in {insert generic name of color, as appropriate and addressed herein}.
IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED
For amendments to identifications consisting of class headings, the scope of the identification is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Accordingly, applicant must amend the class headings throughout the identifications of goods and services and as indicated below to identify specific goods and services that fall within (1) the ordinary meaning of the words specified in the class headings, and (2) the international classification of the headings. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Additionally, because an application must specify, in an explicit manner, “the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce,” proper punctuation in identifications of goods and/or services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. TMEP §1402.01; see 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6). Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons and periods in an identification. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, non-medicated hand soap, shampoo). TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
For example, “modems and/or computer monitors” could refer to “modems or computer monitors” and is unclear which goods applicant intends to identify. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
IDENTIFICATIONS OF GOODS
Generally, applicant must use the common commercial or generic names for goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a). If no common commercial or generic exists for a particular item, applicant must list the purpose, function, and/or field of use of the particular item. See TMEP §1402.01.
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold, underline, and strikethrough):
Class 3: Bleaching preparations and other substances for laundry use, namely, __________ {specify common commercial or generic name of Class 3 substances and substances, e.g., fabric softeners, etc.}; cleaning, polishing, scouring and abrasive preparations; soap, namely, __________ {specify common commercial or generic name of Class 3 soap, e.g., antiperspirant soap, detergent soap, non-medicated soap, etc.};
perfumery,; essential oils for __________ {indicate specific use, e.g., personal use, household use,
etc.},; cosmetics,; hair lotions; dentifrices; potpourris being fragrances; air fragrancing
preparations
Class 5: Pharmaceuticals, medical and veterinary preparations, namely, __________ {specify common commercial or generic name of Class 5 pharmaceuticals and preparations, including the purpose or function of the goods, e.g., psychotropic medications, pharmaceuticals for
the treatment of gout, etc.}; sanitary preparations for medical purposes; dietetic food and substances, namely, __________ {identify common
commercial or generic name of substances in Class 5, e.g., beverages, etc.} adapted for medical or veterinary use,; food for babies; dietary supplements for
humans and animals; plasters for medical purposes,; materials for dressings, namely, __________ {specify Class
5 goods by common commercial or generic name, or if none, by purpose or field of use, e.g., medical and surgical dressings, etc.}; material for stopping teeth, dental wax; disinfectants;
preparations for destroying noxious animals; fungicides, herbicides; air deodorising preparations; car deodorants
Class 7: Machine tools for __________ {indicate purpose or function, e.g., compacting powder materials, crushing rock, etc.}; electric pasta makers for household purposes; beverage preparation machines, electromechanical; power tools, namely, __________ {specify Class 7 tools by common commercial or generic name, e.g., countersinks, tile saws, etc.}; motors and engines except for land vehicles, namely, motors and engines for __________ {indicate vehicle or apparatus for which motors and engines used in Class 7, e.g., airplanes, boats, elevators, etc.}; machine coupling and transmission components except for land vehicles; agricultural implements other than hand-operated, namely, __________ {specify implement in Class 7 by common commercial or generic name, e.g., coulters, incorporators, seed drills, etc.}; incubators for eggs; automatic vending machines; food blenders, electric
Class 8: Hand tools and implements hand-operated, namely, __________ {specify Class 8 hand tools by common commercial or generic name, e.g., screwdrivers, files, etc.}; cutlery; side arms, other than firearms, namely, __________ {specify common commercial or generic name of Class 8 sidearm, e.g., hunting knives, swords, etc.}; razors; table cutlery being knives, forks and spoons
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking
supervision, life-saving and teaching apparatus and instruments, namely, __________ {identify apparatus and instruments in Class 9 by common commercial
or generic name, or if none, by purpose and field of use, e.g., thermometers, video cameras, signaling whistles, etc.}; apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity, namely, __________ {identify apparatus and instruments in Class 9 by common commercial or generic
name, or if none, by purpose and field of use, e.g., insulated copper wire, semiconductor wafers, etc.}; apparatus for recording, transmission or reproduction of sound or images, namely, __________ {identify apparatus in Class 9 by common commercial or generic name, or if none, by purpose and field of use, e.g., cameras, DVD recorders,
etc.}; blank magnetic data carriers,; prerecorded magnetic data carriers featuring __________ {indicate subject
matter of prerecorded content, e.g., computer game programs, word processing software, etc.}; blank recording discs; prerecorded recording discs featuring __________ {indicate subject matter of prerecorded content, e.g., computer game programs, animated cartoons,
etc.}; blank compact discs, dvds DVDs and other digital recording media, namely, __________ {specify media in Class 9 by common commercial or generic name, e.g., video cassettes, etc.}; prerecorded compact
discs, DVDs, and other digital recording media, namely, __________ {specify media in Class 9 by common commercial or generic name, e.g., video cassettes, etc.}, featuring __________ {indicate subject matter of prerecorded content, e.g., music, animated films, etc.}; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software 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}; fire-extinguishing apparatus; magnets; egg timers; sandglasses; headsets for __________ {specify with what
objects headsets used, e.g., cellular or mobile phones, use with computers, etc.}; telephone headsets; cellular phones; cases adapted for cellular phones; eyeglasses; sunglasses; goggles for
sports; eyeglass cases; carrying cases adapted for computers; microphones; mobile radios; blank USB flash drives; prerecorded USB flash drives
featuring __________ {indicate subject matter of prerecorded content, e.g., computer game programs, music, etc.}; downloadable computer
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}; protective helmets
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and
sanitary purposes, namely, __________ {specify apparatus in Class 11 by common commercial or generic name, e.g., radiators, LED light bulbs, HVAC units,
etc.}; cooking apparatus, namely, __________ {specify apparatus in Class 11 by common commercial or generic name, e.g., cooktops, microwave ovens,
etc.}; dispensers, namely, ice dispensing machines,; electric dispensers for air fresheners; lamps; electric bread toasters;
electric tea and coffee making apparatus
Class 12: Vehicles, namely, __________ {specify particular Class 12 vehicles by common commercial or generic name, e.g., automobiles, motorized scooters, etc.}; apparatus for locomotion by land, air or water, namely, __________{specify particular Class 12 vehicles by common commercial or generic name, e.g., automobiles, boats, airplanes, etc.}; bicycles; motor scooters; saddle covers for bicycles; saddle covers for motorcycles; rearview mirrors for vehicles
Class 14: Precious metals and their alloys; jewelry, precious stones; horological and chronometric instruments; cases for being parts of clocks and watches; alarm clocks; key rings comprised of split rings with decorative trinkets or
fobs
Class 15: [no amendments required]
Class 16: Paper and cardboard; printed matter, namely, __________ {indicate printed items in Class 16 by common commercial or generic name, e.g., paper signs, books, manuals, etc.} in the field of __________ {specify subject matter of printed materials, e.g., science, religion, cooking, etc.}; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, ________ {specify materials in Class 16 by common commercial or generic name, e.g., pens, pastels, brushes, etc.}; paintbrushes; typewriters and office requisites except furniture, namely, __________ {specify particular office requisites in Class 16 by common commercial or generic name, e.g., staplers, rubber bands, adhesive tape dispensers, etc.}; instructional and teaching material except apparatus, namely, __________ {specify common commercial or generic name of materials in Class 16, e.g., books, manuals, etc.} in the field of __________ {indicate subject matter of materials, e.g., music, computer games, etc.}; plastic materials for packaging, namely, __________ {specify item in Class 16 by common commercial or generic name, e.g., film, bags, etc.}; printers' type; printing blocks; coasters of paper
Class 18: Leather and imitations of leather; animal skins; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; bags, namely, __________ {indicate specific Class 18 bag by common commercial or generic name, or if none, by purpose or function, e.g., book bags, canvas shopping bags, bags for carrying babies' accessories, etc.}; bags for sports; rucksacks; pocket wallets; coin purses, not of precious metal
Class 20: Furniture, mirrors, picture frames; unworked or semi-worked bone, horn, ivory, whalebone or mother-of-pearl; sea shells; meerschaum; yellow amber; chairs seats; seating furniture; cushions; book rests being furniture; magazine racks; decorations of plastic for foodstuffs; party ornaments of plastic; decorations of plastic for cakes; ornaments of bone, ivory, plaster, plastic, wax or wood, other than Christmas tree ornaments
Class 21: Household or and kitchen utensils,
namely, __________ {identify utensils in Class 21 by common commercial or generic name, e.g., spatulas, graters, etc.}; and household and kitchen containers; combs and sponges for household purposes; brushes, except paintbrushes, for __________ {identify specific purpose or function of brushes in Class 21, e.g., basting meat, cleaning tanks and containers, etc.}; material for
brush-making; articles for cleaning purposes, namely, __________ {identify articles in Class 21 by common commercial or generic name, e.g., scrub
sponges, mops, etc.}; steel wool; glass, unworked or semi-worked, except building glass; glassware, porcelain and earthenware, namely, __________ {identify particular Class 21 goods by common commercial or generic name, e.g., mugs, figurines, cake toppers, etc.}; table plates; paper plates; plastic plates; cabarets trays; trivets
being table utensils; drinking glasses; paper drinking glasses cups; plastic drinking glasses cups; plastic coasters; cups; paper cups; plastic cups; serving bowls; molds being kitchen utensils for __________ {identify for what molds used in Class 21, e.g., cake, chocolate, ice cubes, etc.}; cooking utensils, non-electric,
namely, __________ {specify particular Class 21 goods by common commercial or generic name, e.g., basting spoons, strainers, etc.}; mixing spoons being kitchen utensils; non-electric griddles being cooking utensils; cookie jars; boxes for dispensing paper towels for household
use; bread bins; lunch boxes; thermally insulated containers for food; pastry molds; disposable paperboard bakeware; oven mitts; ovenware; cutting boards for the kitchen
Class 24: Textiles and substitutes for textiles made from __________ {identify material composition of textile substitutes in Class 24, e.g., synthetic materials, etc.}, namely, __________ {identify textile products in Class 24, e.g., towels, handkerchiefs, curtains, etc.}; bed covers; table covers, namely, __________ {identify material composition of table covers and common commercial or generic name of products in Class 24, e.g., plastic table covers, textile tablecloths, etc.}; tablecloths of textile; table napkins of textile; towels of textile; sheets for __________ {identify for what Class 24 sheets applied or intended, e.g., bedding, bath, etc.} made of textile
Class 25: Clothing, namely, __________ {specify particular items of clothing in
Class 25, e.g., shirts, pants, blouses, dresses, etc.}; footwear,; headgear, namely, __________
{identify particular items of headgear in Class 25, e.g., hats, baseball caps, toques, etc.}; gloves being clothing; waistbands being parts of clothing; overalls
Class 26: Lace and embroidery,; ribbons and braid; buttons,; hooks and eyes,; pins, namely, __________ {identify particular type of pin in Class 26 by
common commercial or generic name, e.g., safety pins, hair pins, etc., or if none, by purpose or function}and; needles; artificial flowers
Class 27: Carpets, rugs, mats and matting, linoleum and other materials, namely, __________ {identify materials in Class 27 by common commercial or generic name, e.g., cork, rubber mats, etc.}, for covering existing floors; wall coverings, not of textile
Class 28: Games and playthings, namely, __________ {identify Class 28 and games and toys by common commercial or generic name, e.g., card games, parlor games, puppet theaters, etc.}; gymnastic and sporting articles, namely, __________ {identify Class 28 articles by common commercial or generic name, e.g., parallel bars, basketballs, ski poles, etc.}; decorations for Christmas trees
Class 31: Agricultural, horticultural and forestry products, namely, __________ {identify particular Class 31 products by common commercial or generic name, e.g., seeds, seedlings, fresh raspberries, live cattle, etc.}; unprocessed grains and cereals; live animals; fresh fruits and vegetables; seeds for planting; natural plants and flowers; animal foodstuffs; malt for brewing and distilling
Class 34: Tobacco; smokers' articles, namely, __________ {specify articles in Class 24 by common commercial or generic name, e.g., cigar glue, hookah charcoal, etc.}; matches
IDENTIFICATIONS OF SERVICES
As detailed below, wording throughout applicant's identifications of services are indefinite and must be clarified because the identifications do not describe the specific services offered with the required exactitude. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For instance, the wording "Telecommunications" does not indicate what telecommunications-related services are being offered by applicant with sufficient specificity to accurately describe such services. Applicant must amend this wording as indicated below, to specify the common commercial or generic names of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold and undeline):
Class 38: Telecommunications services, namely, __________ {identify specific Class 38 services by common commercial or generic name, or if none, by purpose or function, e.g., providing prepaid minutes for use on cell phones abroad, wireless telephone services, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, etc.}
Class 39: Transport; packaging and storage of goods; Transport services, namely, arranging of travel tours in the nature of __________ {identify transport-connected services in Class 39 by common commercial or generic name, e.g., arranging transport for travelers, etc.}
Class 43: Services for providing food and drink; providing temporary accommodation at __________ {indicate nature of accommodation, e.g., hotels, guesthouses, etc.}
SCOPE ADVISORY
For assistance with identifying and classifying goods and services in trademark applications, applicant is strongly encouraged to consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each requirement raised in this Office action. To respond to requirements, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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 U.S. commonwealths or U.S. territories. 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.
Kathleen Schwarz
/Kathleen Schwarz/
Examining Attorney
Law Office 123
(571) 272-2460
kathleen.schwarz@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.