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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE:

 

 

INTERNATIONAL REGISTRATION NO. 1390586

 

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.

 

This Office action is in response to applicant’s communication dated 7/11/18. In a previous Office action, registration of the applied-for mark was refused on the basis of a likelihood of confusion with a registered mark and prior-filed pending applications. Further, applicant was required to clarify the applicant’s citizenship and provide an acceptable identification of goods.

 

Applicant’s response raises the following new issue to which applicant must respond timely and completely. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03. Applicant should also note the requirements and refusals maintained and continued from the previous Office action.

 

SUMMARY OF ISSUES

• Request to Change Entity Type – No Assignment – New Issue
• Identification of Goods – Maintained and Continued
• Section 2(d) Refusals – Maintained and Continued
• Prior-Filed Pending Applications – Maintained and Continued

 

REQUEST TO CHANGE ENTITY TYPE – NO ASSIGNMENT

Applicant requested that the owner name be amended from a limited company to a limited corporation; however, the USPTO’s records do not indicate that applicant has filed title transfer documentation with the International Bureau of the World Intellectual Property Organization.  Therefore, the request is denied.

 

If applicant has changed its name or assigned the mark in the application to another entity, documentation affecting title must be submitted to the International Bureau to establish ownership of the application, because the application is part of an international registration.  37 C.F.R. §7.22; TMEP §1904.06.  After ownership documents are recorded, the International Bureau notifies the USPTO of changes of ownership recorded in the International Register and the USPTO’s database is automatically updated to reflect the new owner.  TMEP §1904.06.

 

A new owner may check the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/ to determine whether the USPTO’s database has been updated to reflect a change in ownership that has been recorded with the International Bureau.

 

Applicant is advised that an application filed under Trademark Act Section 66(a) may be assigned only to a person who or an entity that is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol.  15 U.S.C. §1141l; TMEP §§501.07, 1904.06.

 

IDENTIFICATION OF GOODS—MAINTAINED AND CONTINUED

Applicant was previously required to provide an acceptable identification of goods. Applicant has amended the Class 11 entry in an acceptable manner, but Class 29 remains unacceptable. Specifically, applicant fails to specify the particular food items but rather only identifies a means of delivery and preservation. This is not acceptable because it could identify goods outside the scope of this Section 66(a) application, e.g., “freeze dried dishes with the main ingredient being pasta” in Class 30 or “freeze dried food adapted for medical purposes” in Class 5. Thus, this wording is unacceptably indefinite and broad and must be amended.

 

Further, applicant must remove the wording “a full line” from the identification. The USPTO accepts identifications that refer to “a full line of” a genre of gods only if those goods can be classified in a single international class, which is not the case in the instant application as demonstrated by applicant’s evidence, which shows prepared foods consisting primarily of oatmeal, pasta, and rice, which are properly classified in Class 30, which is beyond the scope of this Section 66(a) application.

 

The following is suggested, if accurate:

 

Class 29: Freeze-dried foods, namely, fruit sold in single-serving or portion-controlled containers for use in an electric countertop food preparation apparatus; Freeze-dried food products, namely, fruit sold in pods and cartridges containing freeze-dried foods for use in an electric countertop food preparation apparatus for quickly making ready-to-eat servings

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  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.  See TMEP §1402.04.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—MAINTAINED AND CONTINUED

Applicant has provided arguments against the refusal to register which have been carefully considered and found unpersuasive for the reasons set forth below.

 

Specifically, applicant argues that the marks are sufficiently distinct by virtue of the appearance of the descriptive term EGG in the registrant’s mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Consumers would be likely to perceive the registrant’s mark as a variation on applicant’s product or vice versa, and thus a potential for confusion exists.

Further, applicant argues that the term GENIE is diluted and thus the registered mark should be given limited protection. In support of this, applicant has merely attached printouts of the TESS database. The mere submission of a list of registrations does not make such registrations part of the record.  In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); TBMP §1208.02; TMEP §710.03. 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.

Further, several of the goods in the registrations applicant notes appear to have little or no relation to the goods at issue in the instant refusal and provides no context or additional evidence to indicate how “oil lamps” or “insect control devices” are sufficiently related to food preparation apparatus to be relevant to a determination of dilution in the current application. Thus, they are of minimal probative value in determining the strength or weakness of the term GENIE in relation to the similar goods produced by the applicant and registrant.

Therefore, the refusal is maintained and continued.

 

PRIOR-FILED PENDING APPLICATIONS—MAINTAINED AND CONTINUED

Applicant has failed to provide an acceptable identification of goods; thus, the potential for confusion remains as the nature of the applicant’s goods. Therefore, the advisory with respect to the previously-attached pending applications is maintained and continued.

RESPONDING TO OFFICE ACTIONS

For this application to proceed further, 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 specified in this Office action for responding to a refusal, and should consider those options carefully.  To respond to requirements and certain refusal response options, 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.

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 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(a)(15), 2.66(b)(1).

ASSISTANCE

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. §§2.62(c), 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 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. 

 

 

 

 

/Diane Collopy/

Examining Attorney

Law Office 107

diane.collopy@uspto.gov (informal communications only)

(571) 270-3118

 

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.