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:  October 31, 2019

International Registration No. 1462994

 

This Office action is in response to applicant’s communication filed on October 2, 2019.  The applicant (1) submitted the color description and (2) amended the identification of goods and services.  No. 1 is acceptable. The application has been further reviewed and please note the following New requirement:  Translation of the foreign wording.  In addition, the previously-issued identification requirement for the identified goods below is continued and maintained.   See 37 C.F.R. §2.63(b).

 

TELEPHONE RESPONSE ENCOURAGED:  Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

TRANSLATION

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark MIELE.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “MIELE” in the mark is “HONEY”.  TMEP §809.03.  See attached translation evidence.

 

IDENTIFICATION

 

International Class 11

The wording “Apparatus for heating, steam generating, cooking, refrigerating, freezing, ventilating and water supply, namely, electric, steam, convection, combi-steam, speed and gas ovens, vacuum sealing drawers, cooking ranges, cooktops, stoves, electric cookers, hobs, oven interiors for domestic and commercial applications,…. cooker hoods, extractor ventilators for use in kitchen…; parts and fittings for all aforesaid goods” in the identification of goods is indefinite and must be clarified because applicant must specify how the goods are operated (e.g. electric) and/or further specify the use or application, as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, the wording “parts and fittings for all aforesaid goods,” because the wording could include parts and fittings in different International Classes. 

 

In general, if the goods that precede “and parts and fittings therefor” would likely be classified in one class, the wording “and parts therefor” may be used.  Applicant must amend this wording to specify the common commercial or generic name of the goods and incorporate the wording “parts and fittings therefor” in connection with definite goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

International Class 16

The wording “printed matter, namely, printed instruction manuals” in the identification of goods is indefinite and must be clarified because the applicant must specify the subject matter for the printed instructional manuals.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 21

The wording “hot plates” is misclassified in International Class 21.  The proper classification is International Class 11.  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).   Therefore, the applicant cannot amend the classification for these goods and the wording must be deleted for International Class 21.  Please note applicant does lists “heating hot plates” in International Class 11, presently.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 11:  Apparatus for heating, steam generating, cooking, refrigerating, freezing, ventilating and water supply, namely, electric, steam, convection, combi-steam, speed and gas cooking ovens, vacuum sealing warming drawers, cooking ranges, range hoods, ventilation hoods, extractor hoods for kitchens, downdraft range ventilator, ventilating exhaust fans, electric cooktops, cooking stoves, electric ___(specify type, e.g. pressure, egg) cookers, electric hobs, structural {specify material composition, e.g., metal, glass, ceramic, etc.} framework sold as parts of oven interiors for domestic and commercial applications, electric and gas grills, electric fryers, electric steam cookers, electric warming cabinets for food, cooker range hoods, extractor ventilators for use in kitchen ovens, refrigerators, freezers, wine coolers, namely, refrigerated cabinets containing racks for wine bottles and storage shelves; installations for freezing, namely, electric freezers, upright freezers, ice-making machines; drying installations, namely, machines for drying laundry, namely, electric tumble dryers, electric clothes drying cupboards and spin dryers, condenser dryers, washer dryer combination units; apparatus for ventilation and water supply, namely, electric and gas-powered cooking stoves; cooking rings; heating hot plates; 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; electric steam cookers; electric deep fat fryers; electrically heated cabinets for food; vacuum furnaces; ventilation apparatus, and apparatus for improving air quality, namely, range hoods; scent dosing apparatus, electric dispensers for air fresheners; filters and filtering devices for air and gas conditioning; electric tea machines; electric coffee machines; electric espresso coffee machines; fully automated electric coffee machines; 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, baking ovens; bread making machines; deep fat fryers; and replacement parts and fittings for all aforesaid goods

 

International Class 16:  Paper; cardboard; cardboard boxes; cardboard gift boxes; printed matter, namely, printed instruction manuals in the field of (__specify, e.g. cooking); books, namely, cookbooks; magazines in the field of cooking; plastic materials for packaging, namely, plastic bags for packaging; gift vouchers, namely, non-magnetically encoded gift cards; printed vouchers

 

International Class 21:  Containers for household or kitchen use; frying pans; kitchen utensils namely, pouring and straining spouts, baking trays, baking sheets, steam oven pans, casserole dishes and casserole dish lids, oven pans, carving boards, hot plates; earthenware, namely, earthenware cooking pots, mugs, jars, saucepans; porcelain ware, namely, porcelain cooking pots, mugs, jars, saucepans; glass jars; coffee pots; coolers for wine; ironing boards with integrated ventilator function and/or board heaters

 

NOTE:  International Classes 35, 41 and 43 are acceptable as amended.

 

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.

 

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

 

 

/Josette M. Beverly/

Josette M. Beverly

Examining Attorney

Law Office 115

571-272-9399

Josette.Beverly@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 31, 2019 for

U.S. Trademark Application Serial No. 79257245

 

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. 

 

 

/Josette M. Beverly/

Josette M. Beverly

Examining Attorney

Law Office 115

571-272-9399

Josette.Beverly@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 October 31, 2019, 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.”