Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1522479

 

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 USPTO 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:

 

• Significance/Translation of “MERIEUX”
• Entity Type Must be Clarified
• Identifications of Services Require Clarification

 

REQUIREMENTS

 

Before this application can proceed in the registration process, the following issues must be addressed.

 

1.  Significance/Translation of “MERIEUX”

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording “MERIEUX” in the mark has any meaning or significance in the industry in which the services are manufactured/provided, any meaning or significance as applied to applicant’s services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation:  “The English translation of “MERIEUX” is “[specify English translation, if applicable].”

 

The format for when there is no English translation:  “The wording “MERIEUX” has no meaning in a foreign language. 

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

2.  Entity Type Requires Clarification

 

The application identifies applicant as a “Societe de droit americain,” which is not acceptable as an entity designation in the United States because there is no clear U.S. equivalent legal entity and the entity designation does not appear in Appendix D of the Trademark Manual of Examining Procedure.  See TMEP §803.03(i).  Applicant must indicate the U.S. equivalent of its legal entity or provide a description of the nature of the foreign entity.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).

 

3. Identifications of Services Requires Clarification

 

Portions of the identifications of services are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may adopt the following wording, if accurate: 

 

Commercial Business management assistance to commercial companies in business management; advertising services, namely, assistance to companies in the field of advertising, in particular, carrying out conducting viability marketing studies on advertising of products; conducting market studies; marketing research services, namely, analyzing the analysis of the impact of new products on a panel of consumers (marketing services); marketing research services, namely, sensory analysis and assessment of the impact of new products on a panel of consumers (marketing services); qualitative and quantitative commercial feasibility studies; monitoring and conducting of qualitative and sensory marketing research studies on the impact of products and brand names on consumers; public opinion polling; provision of online information in the field of management and aggregation of data and environmental data management in computer databases; in International Class 35;

 

Training services, namely, providing online training courses and seminars and via online non-downloadable videos in the fields of food microbiology, facility hygiene, environmental monitoring, product safety, shelf life, quality assurance and procedures for training food industry personnel in the application of good manufacturing practices; in International Class 41;

 

Laboratory services, namely, provision of food microbiology laboratory analysis services for food and feed; providing analytical chemistry laboratory services for human and animal consumption, food supplements, nutrition, cosmetics and environment; consulting services in the field of scientific and technological accreditation, including the development and provision of standards and practices to the specification and order of others in the field of manufacture of food and feed by the food and feed processing industries to ensure compliance with laws and government regulations and industrial practices, including quality control and quality assurance practices; consulting services in the field of scientific and technological accreditation, including the development and provision of standards and practices to the specification and order of others in the field of food and feed preparation by food and feed processing industries to ensure compliance with laws and government regulations and industrial practices, including quality control and quality assurance practices; consulting services in the field of scientific and technological accreditation, including the development and provision of standards and practices to the specification and order of others in the field of food and feed storage by food and feed processing industries to ensure compliance with government laws and regulations and industrial practices, including quality control and quality assurance practices; quality control for third parties, namely, provision of verification services for ensuring that laboratories comply with good laboratory practices; scientific and technical research services relating to the sensory impact of products and brands on consumers; industrial design studies and consulting relating to the design of packaging; research and development of new products for others; quality studies and controls, namely, [clarify the nature of the services, e.g., scientific research in the field of quality control]; design and conducting of genetic tests relating to animals and projects for research purposes; design of quality assurance and quality control prevention plans in the field of food and feed manufacturing, food and feed preparation, food and feed storage, of food and feed processing industries intended for professional scientists; conducting scientific investigations for medical purposes for determining the origin of food-borne illnesses, food deterioration incidents and similar events; scientific advisory and research services, namely, design, conducting and management of research projects related to microbiological nutrition, the food industry and testing on animals; software as a service [SaaS] (SaaS) services featuring [specify function, e.g., database, etc.] software for use and computer software development [design] to provide digital solutions to customers in the fields of food production, food preparation, preservation and testing thereof to ensure regulatory compliance, industry laws and practices, including quality control; computer software design and development for others in the fields of food production, food preparation, preservation and testing thereof to ensure regulatory compliance, industry laws and practices, including quality control; provision of online information in the field of food quality control; design and development of software for quality control information management, cloud computing including software for quality control information management, and external data backup; in International Class 42.

 

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.

 

Assistance

 

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. 

 

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).

 

 

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

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@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.