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. 79284114
Mark: H
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Correspondence Address: BEIJING ZHIGUAGUA S; TECHNOLOGY SERVICE |
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Applicant: Fohoway (Tianjin) Technology Development ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1527258
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
IDENTIFICATION OF GOODS IN INTERNATIONAL CLASSES 3, 5, 16, 24, 25, 28, 29, AND 30
The wording in the identification of goods in International Classes 3, 5, 16, 24, 25, 28, 29, and 30 is unacceptable as written because it fails to indicate the nature of the applied-for goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The identification of services in International Class 35 is acceptable as written.
In general:
Class 3:
- The wording “grinding preparations” is indefinite and overbroad because it is unclear what the preparations are, and what they are for grinding. Applicant must amend this wording to fit in Class 3, such as “nail care preparations in the nature of nail grinding preparations to shorten and buff nails”.
- The wording “polishes” is overbroad and indefinite and must be amended to clarify that the goods are nail polishes.
- The wording “laundry preparations” is indefinite and must be amended to clarify that the goods are laundry bleaching preparations.
Class 5:
- The wording “medicines for human purposes” must be amended to clarify what the medicines are for treating.
- The wording “radioactive medicine” must be amended to clarify that the goods are radioactive substances for medical purposes.
- The wording “nutritive substances for microorganisms” should be amended to clarify that the goods are for medical purposes.
- The wording “depuratives” must be amended to clarify that the goods are for the body.
Class 16:
- The wording “advertisement boards of paper or cardboard” must be amended to clarify that the goods are printed.
- The wording “printed publications” must be amended to clarify the type of the publications and to specify the field or subject matter of the publications.
- The wording “packaging material made of starches” must be amended to clarify that the goods are made of starch paste.
- The wording “files” must be amended to clarify the nature of the goods, such as file cards, file sorters, file pockets, file trays, file folders, etc.
- The wording “ink” must be amended to clarify that the goods are writing ink, ink for pens, drawing ink, etc.
- The wording “writing materials” is overbroad and indefinite and must be amended to clarify the types of writing materials as belong in Class 16, such as felt writing pens, ink for writing instruments, writing instruments, writing pads, or personalized writing journals.
- The wording “drawing materials” must be amended to clarify the types of drawing materials, such as drawing pads, drawing paper, drawing ink, drawing pens, or drawing pencils.
- The wording “teaching materials” must be amended to clarify that the goods are printed and to specify the field or subject matter of the materials.
Class 24:
- The wording “textile material” is indefinite and must be amended to clarify the nature of the good as belonging in Class 24, such as curtain holders of textile material, curtain loops of textile material, place mats of textile material, or face towels of textile materials.
- The wording “silk artwork” is overbroad because artworks generally belong in Class 16. Applicant must amend the wording to clarify the nature of the goods as belonging in Class 24, such as silk fabrics for printing artwork patterns.
- The wording “loose covers for furniture” should be amended to clarify that the goods are unfitted to ensure proper classification in Class 24.
- The wording “sheets” must be amended to clarify that the goods are fitted bed sheets.
- The wording “marabouts” is indefinite and must be amended to clarify the nature of the goods. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services. In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(e).
- The wording “hada” is indefinite because the nature of the goods is unclear. The applicant may amend this wording to clarify that the goods are mantel scarves of greeting fabric, to remain in Class 24.
Class 25:
- The wording “religious clothing” is overbroad and must be amended to specify the type of clothing.
Class 28:
- The wording “apparatus for games” is indefinite and must be amended to specify the type of apparatus as belonging in Class 28.
- The wording “conjuring apparatus” is indefinite and overbroad because the nature and function of the apparatus is unclear. This wording must be amended as fits in Class 28, or removed.
- The wording “toys” is overbroad and indefinite and must be amended to describe the nature of the toys, such as pet toys, plush toys, or punching toys.
- The wording “chess” must be amended to clarify that the goods are chess games.
- The wording “fitness exercise machines and apparatus” must be amended to specify the type of equipment and apparatus.
- The wording “machines for physical exercise” must be amended to specify the type of machines.
- The wording “shin guards”, “elbow guards, and “knee guards” must be amended to clarify that the goods are for athletic use.
Class 29:
- The wording “fish-based foodstuffs” must be amended to clarify that the good are processed fish.
- The wording “canned fishery products” must be amended to clarify that the canned fishery products are processed fish.
- The wording “milk products” must be amended to clarify that the good exclude ice cream, ice milk, and frozen yogurt.
Class 30:
- The wording “bee glue” must be amended to clarify that the goods are propolis for human consumption.
- The wording “royal jelly” is overbroad and must be amended to clarify that the goods are for food purposes.
- The wording “essence of chicken with aweto” is indefinite and overbroad because the nature of the goods is unclear. Appropriate replacement wording in Class 30 would be “chicken wing sauce”.
- The wording “cereal preparations” must be amended to indicate the specific items.
- The wording “condiments” must be amended to clarify the specific types of condiments, such as harissa, minced garlic, oyster sauce, chili oil, ketchup, and salsa.
- The wording “preparations for stiffening whipped cream” must be amended to clarify that the preparations are starch-based thickeners.
- The wording “gluten prepared as foodstuff” is no longer acceptable wording, as gluten additives for culinary purposes are in Class 30, and gluten for industrial purposes and gluten for the food industry are in Class 1. To stay in Class 30 the wording must be amended to clarify that the goods are gluten additives.
Applicant may adopt the following identification, if accurate (changes highlighted in bold italic):
International Class 3:
Shampoo; hair conditioners; shining preparations being polish; nail care preparations in the nature of nail grinding preparations to shorten and buff nails; hair dyes; depilatories; sunscreen preparations; incense; cosmetics for animals; air fragrancing preparations; hair lotions; facial cleanser; bath lotion; stain removers; nail polishes; ethereal oils; laundry bleaching preparations; cosmetics; perfumes; dentifrices
International Class 5:
Sanitary towels; medicines for human purposes for the treatment of [specify what is being treated, e.g., intestinal disorders, dental problems, etc.]; radioactive substances for medicinal purposes; gases for medical purposes; chemical conductors for electrocardiograph electrodes; semen for artificial insemination; disinfectants for hygiene purposes; contact lens cleaning preparations; nutritive substances for microorganisms for medical purposes; dietetic substances adapted for medical use; depuratives for the body; medicines for veterinary purposes; biocides; dressings, medical; alloys of precious metals for dental purposes; diapers for pets
International Class 16:
Paper; paper for recording machines; toilet paper; printed advertisement boards of paper or cardboard; note books; cardboard tubes; printed publications, namely, brochures and booklets in the field of [indicate subject matter or field of printed publications]; newspapers; lithographic works of art; packaging material made of starch paste; bookbinding material; files, namely, file cards, file sorters, file pockets, file trays, and file folders; writing ink; sealing stamps; writing materials, namely, felt writing pens, ink for writing instruments, writing instruments, writing pads, and personalized writing journals; gummed tape for stationery use; drawing instruments; drawing materials, namely, drawing pads, drawing paper, drawing ink, drawing pens, and drawing pencils; print engravings; printed teaching materials in the field of [specify field]; architects' models; copying paper; oil paintings
International Class 24:
Textile material, namely, curtain holders of textile material, curtain loops of textile material, place mats of textile material, or face towels of textile materials; lingerie fabric; non-woven textile fabrics; curtains of textile or plastic; silk fabrics for printing artwork patterns; felt; household linen; pillow cases; quilt cover; mattress covers; loose unfitted covers for furniture; fitted toilet lid covers of fabric; bed covers; quilts; fitted bed sheets [textile]; pillowcases; hada, namely, mantel scarves made of greeting fabric; flags of textile or plastic; shrouds
International Class 25:
Clothing layettes; footwear; caps being headwear; hosiery; panty hose; gloves; scarfs; girdles; religious clothing, namely, [specify type of clothing, e.g., shirts, pants, skirts, etc.]; sleep masks; sweatband for sports
International Class 28:
Apparatus for games, namely, [specify apparatus in Class 28, e.g., bases, bats, and balls for playing indoor and outdoor games; plush toys; chess games; balls for games; body-building apparatus; fitness exercise machines and apparatus, namely, [specify the type of equipment, e.g., exercise bands, training bars, etc.]; fitness swing machine; archery implements; machines for physical exercises, namely, [specify the type of equipment, e.g., exercise bands, training bars, etc.]; hunting game calls; play swimming pools; plastic race tracks being toys; shin guards for athletic use; elbow guards for athletic use; knee guards for athletic use; waist guards for athletic use; leg guards for athletic use; arm guards for athletic use; waist trimmer exercise belts being sports articles; wrist guards for athletic use; snowshoes; Christmas trees of synthetic material; fishing tackle; twirling batons; camouflage screens; scratch cards for playing lottery games; grip bands for rackets
International Class 29:
Edible birds' nests; seaweed extracts for food; fish-based foodstuffs, namely, processed fish; canned fishery products in the nature of canned processed fish; pollen prepared as foodstuff; snacks, mainly of fruits or vegetables; processed areca nuts; vegetables, dried; eggs; milk products excluding ice cream, ice milk and frozen yogurt; edible fats; fruit jellies; dried edible mushrooms; tofu products, namely, bean curd products; sausage casings, natural or artificial
International Class 30:
Coffee-based beverages; cocoa-based beverages; tea; flowers or leaves for use as tea substitutes; tea-based beverages; natural sweeteners; candy; honey; bee glue, namely, propolis for human consumption; royal jelly for food purposes; confectionery in the nature of bird's nest stewed with rock sugar; chicken wing sauce containing the essence of chicken with aweto; cookies; pastries; glutinous rice wrapped in bamboo leaves, namely, zongzi; cereal preparations, namely, [indicate specific items, e.g., cereal-based energy bars, snack bars, and snack food]; noodles; cereal-based snack food; starch for food; ice cream; cooking salt; vinegar; condiments, namely, harissa, minced garlic, oyster sauce, chili oil, ketchup, and salsa; yeast; food flavorings, other than essential oils; starch-based thickening preparations for stiffening whipped cream; meat tenderizers for household purposes; gluten prepared as foodstuff, namely, gluten additives for culinary purposes
International Class 35: (no changes required)
Accounting; sponsorship search; rental of sales stands; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail or wholesale services for medicines; retail or wholesale services for veterinary medicines
SCOPE ADVISORY
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.
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).
MARK DESCRIPTION AMENDMENT REQUIRED
The following description is suggested, if accurate: The mark consists of a shaded circle in the shape of a yin-yang symbol, with dark shading on the bottom and lighter shading on the top, containing the stylized letter “H” with the left side of the “H” extending downwards in the shape of a hook or a one-sided arrow.
U.S. COUNSEL 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).
How to respond. Click to file a response to this nonfinal Office action.
Alexandra Foster
/Alexandra Foster/
Trademark Examining Attorney
Law Office 117
(571) 272-5111
alexandra.foster1@uspto.gov
RESPONSE GUIDANCE