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 issues 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 TO WHICH APPLICANT MUST RESPOND:

Amended Identification of Goods Required
Entity Clarification Required
U.S.-Licensed Attorney Required

AMENDED IDENTIFICATION OF GOODS REQUIRED

The wording “probiotics for the food industry” in the identification of goods in Class 1 is indefinite and must be clarified because it does not make clear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording in Class 1, if accurate:

Probiotic bacteria and probiotic bacterial cultures for use as ingredients for food in the food industry

In addition, the wording “probiotic bacterial formulations for medical use” in the identification of goods in Class 5 is indefinite and must be clarified because it does not make clear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording in Class 5, if accurate:

Probiotic supplements and probiotic bacterial formulations being probiotic preparations for medical use

Scope Advisory

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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 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).

ID Manual Online

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

ENTITY CLARIFICATION REQUIRED

Applicant’s business name includes the foreign business designation “A/S”; however, Applicant set forth “Limited Liability Company” as the legal entity in the application. This business designation is generally considered the equivalent of an “Aktieselskab” or a “Public Limited Company”. See TMEP app. D. Therefore, applicant must clarify the entity type in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate. See TMEP §803.03(i).

Alternatively, if Applicant maintains that the legal entity in the application properly identifies Applicant’s entity type, Applicant must provide an explanation as to why the identified entity type is more similar to a “Limited Liability Company” in this instance than to the legal entities listed in TMEP Appendix D. 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).

HOW TO RESPOND

For this application to proceed, Applicant must explicitly address each requirements in this Office action. 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.

Click to file a response to this nonfinal Office action.

ASSISTANCE

Please call or email the assigned Trademark Examining Attorney with questions about this Office action. Although the Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the requirements 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.

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 Applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.