Offc Action Outgoing

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.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF THE RECORDS

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 DESCRIPTION

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Therefore, applicant must provide this description. See TMEP §807.07(a)(ii).

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).

The following description is suggested, if accurate: “The mark consists of the following: The word "MIELE" appearing in white against a red rectangular background.

IDENTIFICATION

Applicant must rewrite the identification of goods as identified below. 37 C.F.R. §2.74(a). The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

In some instances, reconstructing the wording can make an identification for goods or services acceptable. Applicant should avoid the use of parentheses, as the Office sometimes uses them to designate goods and services that have been deleted from registrations. Moreover, there should be no duplications in identifications, so one of the repeated items should be deleted. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. 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, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. 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, bar soap, shampoo). Id. 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.

The bold wording below indicates the nature of the detail required. The underlined italicized wording in brackets indicates the need for information that applicant must provide. Please note that the information must be for goods in the class designated by the International Bureau. In some instances, applicant will be required to provide the common commercial name for the product. Please see below for additional guidance and suggestions below by international class.

The examining attorney has provided additional guidance and suggestions with each individual class. Applicant may substitute the following wording, if accurate:

International Class 11: Apparatus for heating, steam generating, cooking, refrigerating, freezing, ventilating and water supply, namely, {specify goods in International Class 011 only, e.g., electric heating fans, heating furnaces, hot-air space heating apparatus, hot-water space heating apparatus, steam generators, steam valves, steam radiators for heating buildings; cooktops, cooking ranges, domestic and commercial cooking ovens, microwave cooking ovens; refrigerating machines, refrigerators; ventilating exhaust fans, ventilating fans for commercial and industrial use, ventilating louvers, ventilation hoods; toilets, sinks, bath tubs, and pipes being parts of sanitary facilities}; unit (__specify type, e.g. water) heaters; s~~team generating apparatus; cooking appliances; refrigerating apparatus;~~ installations for freezing, namely, {specify goods in International Class 011 only, e.g., electric freezers}; drying installations, namely, {specify goods in International Class 011 only, e.g., clothes drying machines, hair drying machines for beauty salon use, dryers for the removal of water vapor from compressed air and gas}; apparatus for ventilation and water supply, namely, electric and gas-powered cooking stoves; electric (__specify type, e.g. pressure) cookers; kitchen cooking ranges; electric cooking utensils, namely, {specify goods in International Class 011 only, e.g., cooktops, cooking ranges, domestic and commercial cooking ovens, microwave cooking ovens}; ~~apparatus or installations for cooking; cooking hobs;~~ cooking rings; heating hot plates; electric baking muffles and kilns for household and industrial kitchen use; electric slow cookers; microwave ovens; electric and gas-powered griddles and grills; electric hot-air cookers; electric deep fryers; electric roasting and grill plates; electric pressure cooking apparatus; ~~steaming apparatus (electric -) for cooking~~; electrically heated bain-maries; electric steam cookers; electric deep fat fryers; electrically heated cabinets for food; vacuum steam heating apparatus, namely, (__specify type of apparatus, e.g. steam radiators for heating buildings); vacuum furnaces; ventilation apparatus, and apparatus for improving air quality, namely, range hoods; ventilation hoods; ~~ventilation [air-conditioning] installations and apparatus;~~ scent dosing apparatus, namely, non-electric air diffusers comprised of a wick in a container used to emit scent when lit sold without scented oil; filters and filtering devices for air and gas conditioning; electric tea machines; electric coffee machines; electric expresso coffee machines; fully automated electric coffee machines~~, included in this class; refrigerating appliances~~; refrigerating cabinets; refrigerating show cases; refrigerated display cases; beverage cooling apparatus; fridge-freezers; mechanical tap faucets for dispensing chilled beverages for use with apparatus for chilling beverages; freezers; electric deep freezers; refrigerating chests for chilling foods; ice chests; ice machines and apparatus; electric laundry drying machines; electric laundry dryers; electrically operated drying cabinets for laundry; heat pumps; sterilizers; installations for baking, namely, (__specify type of installations, e.g. baking ovens); baking ovens; bread making machines; deep fat fryers; and parts therefor for (__specify definite goods, e.g. cooking ovens, electric deep freezers)

International Class 16: Paper; cardboard; cardboard boxes; cardboard gift boxes; printed matter, namely, {specify goods in International Class 016 only, e.g., maps, printed guide books featuring travel}; books, namely, {specify goods in International Class 016 only, e.g., account books, address books, baby books, books in the field of {indicate subject matter}, check books, cook books, children’s books, note books}; magazines in the field of {specify subject matter}; plastic materials for packaging, namely, {specify goods in International Class 016 only, e.g., plastic bags for packaging, plastic bubble packs for wrapping or packaging}; office requisites, namely, {specify goods in International Class 016 only, e.g., adhesive tape dispensers, correcting fluid for type, finger-stalls, franking machines, envelope sealing machines, punches, rubber bands, staplers}; gift vouchers, namely, non-magnetically encoded gift cards; ~~dust bags of paper~~; plastic bags for packaging, wrapping and storage of paper, cardboard or plastics; labels of paper or cardboard; humidity control sheets of paper or plastic for foodstuff packaging

International Class 21: Small hand-operated household and kitchen utensils~~, household and kitchen containers~~, namely, {specify goods in International Class 021 only, e.g., graters, sieves, spatulas, strainers, whisks, rolling pins, serving forks}; containers for household or kitchen use; cleaning instruments, hand-operated, namely, {specify goods in International Class 021 only, e.g., cleaning brushes for house use,}; cleaning cloths; sponges for facial cleaning; strainers for household purposes; household utensils, namely, {indicate specific items, e.g., pot and pan scrapers, rolling pins, spatulas, turners, whisks}; frying pans; kitchen utensils, namely, pouring and straining spouts; sponges for household purposes; cleaning brushes for household purposes; ironing boards; earthenware, namely, {indicate type of earthenware, e.g. figurines, plaques, cooking pots}; porcelain ware, namely, {indicate type of porcelain ware, e.g. figurines, plaques, cooking pots}; glass jars; glass vases; glass carafes; coffee pots; insulated flasks; flasks; drinking flasks; vacuum flasks; dusters; ironing board covers; blast chillers for wine; coolers for wine; cold packs for chilling food and beverages; portable cool boxes, non-electric; ironing boards with integrated ventilator function and/or board heaters

International Class 29: Arrangements of processed fruit; ~~ready-to-eat desserts based on~~ milk or artificial milk-based shakes; oils for food; part-cooked, pre-cooked, chilled or frozen ready meals consisting predominantly of eggs, poultry, vegetables, fish, meat, meat substitutes, seafood or game

International Class 30: Coffee, teas and cocoa and substitutes therefor; chilled or frozen ready meals consisting of pasta or pastries; fresh or frozen pastries and confectionery; fresh or frozen pastries with fillings consisting of fish, meat, poultry, vegetables, fruits or game; prepared desserts pastries; chocolate based prepared desserts; ready-to-eat dessert pastries; ready-to-eat confectionery desserts; petits fours ~~(cakes)~~; chocolates; spices

International Class 35: Product merchandising for others in the nature of inventory display and shelf arrangement; advertising, marketing and promotional services; business administration services; business management assistance and particularly carrying out tasks necessary for the smooth conduct of sales by auction; presentation of goods and services; demonstration of goods; the bringing together, for the benefit of others, of a variety of goods for presentation and sales purposes in the field of household appliances and utensils; arranging of contracts, for others, for the buying and selling of goods; arranging of contracts, for others, for the providing of services; arranging commercial transactions for third parties, also within the framework of e-commerce; arranging contracts relating to concluding commercial transactions, for others; retailing and wholesaling, including via the internet and via mobile internet, in the fields of household appliances and utensils; wholesaling and retailing, including via the internet, in relation to delicatessen food and beverages; event marketing

International Class 37: Repair, maintenance, installation of household appliances, industrial apparatus and equipment and household appliances and equipment operated electrically and/or electronically and/or with fuel, including gas, and kitchen furniture; washing, drying and ironing of laundry services; rental of cleaning and washing and drying machines and equipment; rental of household appliances, namely, (__specify large scale appliances, e.g. dish washing machines)

International Class 39: Delivery of goods; storage of goods; wrapping of goods for transport to the order and specification of others; packaging of goods to the order and specification of others; rental of freezers

International Class 41: Educational services, namely, conducting cooking instruction classes and conducting correspondence courses in the field of cooking; Training services, namely, arranging of cooking instruction courses and cooking demonstration events; arranging of online cooking courses and online cooking demonstration events ~~and chefs~~; entertainment consultancy in relation to the organization of cooking competitions, cooking instruction courses and cooking demonstration events; providing of entertainment information in relation to cooking instruction courses and cooking demonstration events~~; education; providing of training; entertainment; cultural activities~~

International Class 43: Advice concerning cooking recipes; personal chef services; consulting services in the field of culinary arts; sommelier services, namely, providing advice in relation to food and wine; consultancy in relation to the preparation of meals using cooking utensils, namely, electric and gas ovens cooking ranges, stoves, electric cookers, hobs, hot plates, heater plates, oven interiors and cookers for domestic and commercial applications, microwave ovens, electric and gas grills, fan-assisted electric cookers, electric fryers, griddles, electric pressure cookers, electric steam cookers, electric bain-maries, electric warming cabinets for food, cooker hoods, extractor ventilators for use in kitchens; café and restaurant services

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.

ASSISTANCE

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

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.

/Josette M. Beverly/

Examining Attorney

Law Office 115

(571) 272-9399

josette.beverly@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.