Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  January 02, 2020

 

International Registration No. 1279513

 

Notice of Provisional Full Refusal

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

This application was approved for publication on December 9, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Identification of Goods

The current wording used to describe the goods and/or services needs clarification because it is indefinite and unclear as to the nature of applicant’s goods and/or services, as indicated below in the suggested identification of goods and services.

 

Specifically, in Class 9, “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity” is indefinite. The specific apparatus must be named, e.g., photovoltaic cladding panels.  Please clarify the nature of these services. Because this application was filed under Trademark Act §66(a), the services must be amended in a way that they remain in the class as originally filed.   

 

Further, in Class 20, “goods of wood, cork, reed, cane, wicker, horn, bone, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely, non-metal profiles for arranging devices on and in walls, ceilings and other surfaces” is not acceptable. The ID references horn, bone, ivory, and whalebone. However, the record does not reflect whether the items or activities with which the mark is used are in violation of federal law under TMEP §907. 

 

Specifically, in this case, the items or activities in the application with which the mark is used involve a per se violation of federal law.  Specifically, federal law prohibits or restricts commerce related to goods comprised of or services related to ivory, bone, whalebone, horn/tusks.  See the Endangered Species Act (ESA), 16 U.S.C. §§1531-1544/Marine Mammal Protection Act (MMPA), 16 U.S.C. §§1361-1407/African Elephant Conservation Act, 16 U.S.C. §§4201-4246.  That is, the ESA and associated regulations prohibit importing, exporting, selling, delivering, receiving, carrying, transporting, or shipping in interstate or foreign commerce African or Asian elephant ivory other than for excepted goods, as well as, the MMPA and associated regulations prohibit the possession, transport, purchase, sale, import, or export of a marine mammal or marine mammal products taken in violation of the MMPA other than for excepted purposes/African Elephant Conservation Act prohibits importing and exporting African elephant ivory.

 

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.

 

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 amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 amended.  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).

 

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). 

 

New Issue:  Request for Information

In addition, applicant must submit a written statement indicating whether all the goods and/or services identified in the application will comply with relevant federal law, including the Endangered Species Act (ESA), 16 U.S.C. §§1531-1544/Marine Mammal Protection Act (MMPA), 16 U.S.C. §§1361-1407/African Elephant Conservation Act, 16 U.S.C. §§4201-4246.  See TMEP §1401.14(f).  This law prohibits or restricts commerce related to goods comprised of or services related to ivory, bone, whalebone, horn/tusks.  That is, the ESA and associated regulations prohibit importing, exporting, selling, delivering, receiving, carrying, transporting, or shipping in interstate or foreign commerce African or Asian elephant ivory other than for excepted goods/MMPA and associated regulations prohibit the possession, transport, purchase, sale, import, or export of a marine mammal or marine mammal products taken in violation of the MMPA other than for excepted purposes/African Elephant Conservation Act prohibits importing and exporting African elephant ivory.

 

Finally, applicant must provide written responses to the following questions:

 

(1)        Does the ivory, bone, whalebone, horn/tusks fall under an exception in the ESA/MMPA/African Elephant Conservation Act?

 

(2)        If these goods and/or services fall under an exception in the ESA/MMPA/African Elephant Conservation Act, please explain how the goods and/or services constitute an exception.  For example, if the goods qualify as exempted antiques under the ESA, please provide such information.

 

New Issue: Entity Nature

The applicant's name contains KG, which is a limited partnership under TMEP Appendix D; however, the entity type is listed as a corporation.  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).  Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i). 

 

Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

Responses

If applicant has questions about its application or needs assistance in responding to this Office action, please email the assigned trademark examining attorney directly at the address below.

 

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

 

/Bernice Middleton/

Bernice Middleton

Examining Attorney

Law Office 106

571-270-1514

Bernice.Middleton@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. 

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 02, 2020 for

U.S. Trademark Application Serial No. 79237600

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Bernice Middleton/

Bernice Middleton

Examining Attorney

Law Office 106

571-270-1514

Bernice.Middleton@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 02, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”