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. 79279442
Mark: ACTIVIA
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Correspondence Address:
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Applicant: COMPAGNIE GERVAIS DANONE
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1454411
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).
SEARCH OF USPTO DATABASE OF MARKS
U.S. LICENSED ATTORNEY REQUIRED
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 an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
CITIZENSHIP
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 information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading 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. See id.
IDENTIFICATION OF GOODS
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 030 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international class(es) 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 to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
Moreover, applicant must delete the wording “included in this class” in International Class 030 because such wording is not part of the common name of a good, and those unfamiliar with the Nice Classification would not understand the limitation. See TMEP §1402.06(a).
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language.
Madrid Applicants
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or
shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods
and/or services which should be removed, it will be shown with a double line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL
CAPS.
Applicant may adopt the following identification, if accurate:
International Class 029: Milk, milk products EXCLUDING ICE CREAM, ICE MILK AND FROZEN YOGURT; and MILK substitutes therefor; powdered milk; flavored jellied milks and buttermilk; milk desserts, NAMELY, __________ {please
specify goods in International Class 029 only, using common commercial or generic names, e.g., milk shakes}; yogurts; drinking yogurts; white cheese; petit Suisse CHEESE; MILK AND DAIRY-BASED beverages mainly consisting of milk or dairy
products; milk beverages, milk predominating; milk beverages containing fruit; unflavored or flavored fermented dairy products, NAMELY, __________
{please specify goods in International Class 029 only, using common commercial or generic names, e.g., yogurts, drinking yogurts, milk ferments for culinary purposes}; milk
substitutes of vegetable origin; substitutes of dairy products based on plants or nuts, NAMELY, __________ {please specify goods in International Class 029
only, using common commercial or generic names, e.g., almond milk, butter substitutes, cheese substitutes}; MILK BASED BEVERAGES CONTAINING fruitS or vegetableS beverages consisting mainly of milk
products
International Class 030: Cocoa, chocolate, cocoa-based beverages, chocolate-based beverages, coffee-based beverages, tea-based beverages;
custard; chocolate mousses, dessert mousses BEING CONFECTIONERY; [confectionery], confectionery, NAMELY, __________ {please specify goods in International Class 030 only,
using common commercial or generic names, e.g., candy and chocolate, pastilles, zefir}; sugar confectionery MADE OF SUGAR, sugar, puffed rice, preparations made from cereals, NAMELY, __________ {please specify goods in International Class 030 only, using common commercial or generic names, e.g., cereal bars, biscuits}; breakfast cereals; SWEET OR
SAVORY biscuits (sweet or savory); cakes; pastries; waffles; cereal-based desserts, NAMELY, __________ {please specify goods in International Class 030 only, using common commercial or generic names, e.g., cakes, tarts}; rice cakes;
semolina cakes; rice pudding, rice-based snack food, cereal-based snack food; edible ices, edible ices consisting primarily of yogurt, ice-cream, sherbet BEING EDIBLE
ICES (edible ices), frozen yogurts BEING EDIBLE ICES (edible ices), edible ice-cream made with flavored frozen water; fruit coulis BEING
SAUCES [sauces]; beverages of vegetable origin, excluding dairy substitutes, included in this class
International Class 032: Still AND or sparkling waters; STILL AND SPARKLING MINERAL WATERS (mineral or
other), fruit AND or vegetable juices, FRUIT AND VEGETABLE beverages with fruits or vegetables, lemonades, soda water,
sherbets BEVERAGES (beverages), preparations for making beverages, , NAMELY, __________ {please specify goods in International Class 032 only, using common commercial or generic names, e.g., lemon juice, powders for making soft drinks}; syrups for beverages,
NON-ALCOHOLIC VEGETABLE AND FRUIT EXTRACTS USED IN THE PREPARATION OF BEVERAGES vegetable or
fruit extract without alcohol, non-alcoholic FRUIT JUICE beverages; plant-based beverages, NAMELY, NON-ALCOHOLIC CACTUS-BASED
BEVERAGES
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.
RESPONSE GUIDELINES
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Mariam Aziz Mahmoudi/
Trademark Examining Attorney
LO 115
United States Patent & Trademark Office
Tel. (571) 272-9733
mariam.mahmoudi@uspto.gov
RESPONSE GUIDANCE