Offc Action Outgoing

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 searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.

SUMMARY OF ISSUES:

Amendment of Identification of Goods Required
Applicant’s Legal Entity Type and Citizenship Required
U.S.-Licensed Attorney Required

AMENDMENT OF IDENTIFICATION OF GOODS REQUIRED

Several entries in the identification of goods are indefinite and/or too broad. This wording must be clarified because it is not clear what the goods are and/or could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in the particular class specified in the application for the respective goods. See TMEP §1904.02(c), (c)(ii).

The chart below lays out in detail the specific issues with each of the relevant entries in the identification of goods, as well as suggested amendments for correcting these issues:

IDENTIFICATION	ISSUE(S)	SUGGESTED AMENDMENT
Hookahs and electronic hookahs and accessories thereof;	Indefinite and overly broad; must clarify “accessories” as structural parts to be properly in Class 34	Hookahs and electronic hookahs and *structural parts* thereof;
tobacco products;	Indefinite; must specify particular tobacco products	tobacco products, namely, {specify, e.g., leaf tobacco, hookah tobacco, chewing tobacco, etc.};
tobacco substitutes, in particular those made out of tea and tea plants;	Acceptable	tobacco substitutes, in particular those made out of tea and tea plants;
cut and uncut tea leaves for smoking as tobacco substitute;	Acceptable	cut and uncut tea leaves for smoking as tobacco substitute;
cigarette tobacco;	Acceptable	cigarette tobacco;
chewing tobacco;	Acceptable	chewing tobacco;
pipe tobacco;	Acceptable	pipe tobacco;
shisha tobacco;	Acceptable	shisha tobacco;
smokers' articles of all kinds, in particular matches;	Acceptable	smokers' articles of all kinds, in particular matches;
shishas and electronic shishas and accessories thereof;	Indefinite and overly broad; must clarify goods as being pipes, clarify “accessories” as structural parts to be properly in Class 34	shisha *pipes* and electronic shisha *pipes* and *structural parts* thereof;
electronic cigarettes;	Acceptable	electronic cigarettes;
cigars;	Acceptable	cigars;
small cigars;	Acceptable	small cigars;
electronic cigars;	Acceptable	electronic cigars;
electronic vaporizing smoking device;	Acceptable	electronic vaporizing smoking device;
e-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes;	Acceptable	e-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes;
smoking pipes;	Acceptable	smoking pipes;
steam stones, in particular steam stones for water pipes;	Indefinite; must clarify as being for heating tobacco for purposes of inhalation and for use in tobacco water pipes	steam stones, in particular steam stones for *heating tobacco for the purpose of inhalation for* *use in tobacco* water pipes;
mineral substances for use as flavorings for use in water-pipes;	Indefinite and overly broad; must clarify goods as being other than essential oils and as being for use in tobacco water pipes to be properly in Class 34	mineral substances, other than essential oils, for use as flavorings for use in *tobacco* water-pipes;
inhalable aerosols and carrier substances therefor, for use in water pipes;	Indefinite; must clarify as being for smoking and specifically adapted for use in tobacco water pipes	inhalable aerosols *for smoking* and carrier substances therefor, *specifically adapted* for use in *tobacco* water pipes;
substances for the inhalation for use in water-pipes, in particular aromatic substances for smoking;	Indefinite; must clarify goods as being in the nature of tobacco substitutes	substances for the inhalation for use in water-pipes, in particular aromatic substances *being tobacco substitutes* for smoking;
all the aforesaid goods not for medical purposes	Acceptable	all the aforesaid goods not for medical purposes

Applicant may adopt the following amended identification of goods, if accurate:

International Class 34: Hookahs and electronic hookahs and structural parts thereof; tobacco products, namely, {specify, e.g., leaf tobacco, hookah tobacco, chewing tobacco, etc.}; tobacco substitutes, in particular those made out of tea and tea plants; cut and uncut tea leaves for smoking as tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers' articles of all kinds, in particular matches; shisha pipes and electronic shisha pipes and structural parts thereof; electronic cigarettes; cigars; small cigars; electronic cigars; electronic vaporizing smoking device; e-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes; smoking pipes; steam stones, in particular steam stones for heating tobacco for the purpose of inhalation for use in tobacco water pipes; mineral substances, other than essential oils, for use as flavorings for use in tobacco water-pipes; inhalable aerosols for smoking and carrier substances therefor, specifically adapted for use in tobacco water pipes; substances for the inhalation for use in water-pipes, in particular aromatic substances being tobacco substitutes for smoking; all the aforesaid goods not for medical purposes

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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 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 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.

APPLICANT’S LEGAL ENTITY TYPE AND CITIZENSHIP REQUIRED

Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation. See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of international registrations to the United States”). See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. 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 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.

U.S.-LICENSED ATTORNEY REQUIRED

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.

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.

To appoint or designate a U.S.-licensed attorney. 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).

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.

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

/Kyle D. Simcox/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7851

Kyle.Simcox@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 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.