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: 

International Registration No. 1422500

 

This application was approved for publication on July 18, 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  However, approval of the application has been withdrawn to address the issue(s) below.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.

 

REQUIREMENT FOR INFORMATION

To permit proper examination of the application, applicant must submit additional information about the goods and/or services.  See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); TMEP §§814, 907.  The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the particular goods.  If such materials are not available, applicant must provide a detailed factual description of the goods.  Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application. 

 

In addition, applicant must submit a written statement indicating whether all the goods identified in the application comply with or 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/tusk fall under an exception in the ESA/MMPA/African Elephant Conservation Act?

 

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

 

IDENTIFICATIONS REQUIRE AMENDMENT

The International Class 20 identification of goods is unacceptable because portions are indefinitely worded.  See TMEP §§1402.01, 1402.03.

 

“Raw or semi-worked bamboo” implicates goods outside of International Class 20 (e.g., bamboo fiber in Cl 22). Please clarify to specify goods in International Class 20 [e.g., bamboo blinds containing semi-worked bamboo].

 

“Non-metal … movable steps” implicates non-metal stairs in International Class 19. Please clarify to specify goods in International Class 20.

 

“Letter boxes, non-metallic” implicates “letter boxes of masonry” in International Class 19. Please specify International Class 20 goods.

 

Please note that the wording “horn, bone, ivory, whalebone” in the International Class 20 identification has been removed pending applicant’s response to earlier-mentioned requirement for information.

 

Applicant may change the wording to the following, if accurate [please note that the current unacceptable entries appear italicized and suggested wording the applicant must provide appears in bold]:

 

Class 20:         Furniture and furniture fittings, not of metal; mirrors, picture frames, beds; racks, namely, hat racks and storage racks; cupboards; desks, seats, armchairs, sofas, high chairs for babies and infant walkers, coat hangers, bolsters; goods included in this class of wood, cork, reed, cane, wicker, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely, mooring buoys, non-metallic, locks with keys sold as a unit, door, gate and window fittings, valves for containers, fasteners in the nature of bolts, nails, rivets, screws, door clappers, cable clips, connecting parts for furniture, compartments for furniture in the nature of drawer organizers, flaps hinges, grab bars, hooks, identification bracelets, moldings for picture frames, plugs in the nature of dowels, protectors for furniture in the nature of fitted furniture leg covers for floor protection purposes and support devices for furniture in the nature of carpet coasters for protecting furniture legs, split rings for keys, poles, saw horses, sink mats, hardware in the nature of stair rods, hardware in the nature of non-electric door springs, staves, suction cup hooks, tent pegs, and trays not of metal in the nature of plastic trays for foodstuff packaging; casks, not of metal, packaging containers of plastic, containers, not of metal, for liquid fuel, inflatable publicity objects included in this class; chests, not of metal; ladders of wood or plastics; bamboo blinds containing semi-worked bamboo; works of art, of wood, wax, plaster or plastic; display boards; decorations of plastic for foodstuff; animal housing in the nature of nesting boxes and beds; identification bracelets, not of metal, for hospitals; coffins and funerary urns; coat hooks; curtain rings; statues, figurines, works of art and ornaments and decorations, included in this class, namely, statues, figurines and works of art made of plaster, plastic, wax and wood and inflatable figures for use as outdoor holiday decorations; unprocessed and semi-processed materials included in the class, not specified for use, namely, amber, meerschaum; containers, not of metal for use in transportation and storage for commercial or industrial use; closures, not of metal, for containers; non-metal ladders and movable step stools; display stands and signboards of wood or plastics; bed frames; flower-pot pedestals; letter boxes, non-metallic and non-masonry; boxes of wood or plastic; figurines in the nature of statuettes of wood, wax, plaster or plastic; coat hooks, not of metal; coat stands; toilet mirrors being hand-held mirrors; infant walkers; cushions; paper blinds; screens; umbrella stands; keyboards for hanging keys; inflatable publicity objects; wind chimes; magazine racks; newspaper display stands; dog baskets on the nature of dog beds; dog kennels; portable kennels' cat baskets in the nature of cat beds; cat beds; scratching post for cats; identification tags of plastic for animals' pet cushions; kennels for household pets; beds for household pets; inflatable beds for pets; sleeping baskets in the nature of non-metallic beds for domestic household pets; parts and fitting of all aforesaid goods included in the class.

                                                              

TMEP §1402.01.

 

PLEASE NOTE: An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv).  In an application 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).

 

In addition, in a Section 66(a) application, 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), 1402.01(c).  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); TMEP §§1401.03(d), 1402.01(c).

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

U.S. COUNSEL REQUIREMENT

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  

 

 

/Ronald L. Fairbanks/

Ronald L. Fairbanks

Examining Attorney

Law Office 119

571-272-9405

ron.fairbanks@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 applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

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