United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79262902
Mark: MAGICEZY
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Correspondence Address: |
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Applicant: Yesnil Pty Ltd
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1476981
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
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).
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 OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES:
Identification of Goods – Amendment Required
Issues Regarding Applicant’s Entity Type
IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
The identification of goods contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant must clarify the wording “fillers in the nature of paint” and “filler materials in the nature of paint” in the identification of goods in International Class 2 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are.
Applicant must clarify the wording “paint preparations” in the identification of goods in International Class 2 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the wording is.
Further, this wording could identify goods in more than one international class. For example, “chemical preparations for use in the manufacture of paints” is in International Class 1 and “coating preparations in the nature of paint having water repellent properties” are in International Class 2.
Applicant must clarify the wording “polyurethane coatings (paints),” “polyurethane finishes (paints),” “sealing preparations (paints),” “sealing preparations for floors (paint),” and “wall coatings (paint)” in the identification of goods in International Class 2 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Applicant must further specify the type and nature of the goods.
Applicant must clarify the wording “whites (colorants paints)” in the identification of goods in International Class 2 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Applicant must further specify the nature of the goods.
Applicant may substitute the following wording, if accurate:
Class 2: Acrylic decorative coatings in the nature of paint; fillers in the nature of paint primers for automotive body repair; floor paints; levelling preparations in the nature of paints; organic coatings being paints; ornamental paints; paint preparations in the nature of paint having water repellent properties; paint products, namely, agglutinants for paint, paint thinners and thickeners for paint; paint thickeners; paints; paints for marine use; acrylic protective coatings in the nature of paint; paints for office use; paints having flexible properties; polyurethane coatings for {indicate specific type e.g., automobile finishing, furniture, floors, for exterior and interior use on a variety of substrates, etc.}; polyurethane finishes in the nature of paints for {indicate specific type e.g., automobile finishing, furniture, floors, for exterior and interior use on a variety of substrates, etc.}; resurfacing materials being coatings in the nature of paints; sealing preparations in the nature of paint sealers; sealing preparations in the nature of paint sealers for floors; wall coatings being paint; waterborne paints other than insulating; water repellent coatings being paint for masonry; automotive paints; white lead; wood coatings being paints; coating compositions in the form of paint; coating compositions in the nature of paint; colorants for use in the manufacture of ceramic paints; coloured paints; emulsions in the nature of paint; filler materials in the nature of paint primers for automotive body repair
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
ISSUE REGARDING APPLICANT’S ENTITY TYPE
Applicant must specify its legal entity and national citizenship or foreign country of organization or incorporation, as this required information is not included in the application. See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 2.61(b); TMEP §§803.03, 803.04. This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a). See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a).
Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.
To provide this entity information using the Trademark Electronic Application System (TEAS) Response to Office Action form, applicant must open the response form, answer “Yes” to wizard question number 5, find the “Owner Information” page, and do the following: (1) locate the “Entity Type” heading on that page and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. The application record indicates that applicant’s domicile is outside of the United States in Australia, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such representation. See id. 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 (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, 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
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.
/Sarah E. Steinpfad/ Steinpfad, Sarah
Sarah E. Steinpfad
Trademark Examining Attorney
Law Office 120
571-270-3089
Sarah.Steinpfad@uspto.gov
RESPONSE GUIDANCE