United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79285820
Mark: KO
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Correspondence Address: ZIBO TIANZI TRADEMARK AGENCY; CO., LTD. Room1126, Block B, ; No.188, Huaguang Ro
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Applicant: Zibo KunYang Ceramic Corporation Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1531386
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 RESULTS
However, applicant must address the following issues.
IDENTIFICATION OF GOODS
In particular, applicant must clarify the nature of its imitation porcelain, imitation pottery, ceramics for household purposes, altars, cans, pottery jars, casseroles, pottery utensils, porcelain ware, and pottery.
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, any modification to this wording must identify goods in International Class 21 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording, if accurate:
“Imitation porcelain, namely, [applicant must specify, e.g., ceramic serving dishes]; imitation pottery, namely, [applicant must specify, e.g., clay pots]; ceramics for household purposes, namely, [applicant must specify, e.g., serving dishes, vases, etc.]; daily porcelain, namely, pots, bowls, plates, jars, altars in the nature of [applicant must specify goods in Class 21], and canister sets; daily pottery, namely, pots, bowls, plates, earthenware jars, casserole dishes, and pottery utensils in the nature of [applicant must specify, e.g., serving spoons]; porcelain ware, namely, [applicant must specify, e.g., dishes]; china ornaments; pottery, namely, [applicant must specify, e.g., pots, vases, etc.]; statues, busts and works of art of porcelain, ceramic, earthenware, terra-cotta or glass” in International Class 21
Identifications can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a), 1904.02(b). In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods in the international class designated in the application as filed. See TMEP §§1402.03(d), 1402.07(a).
Thus, applicant can only amend the identification to include goods that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
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.
The following description is suggested, if accurate: The mark consists of the stylized letters KO above two Chinese characters.
REQUIREMENT FOR U.S.-LICENSED ATTORNEY
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.
/Kristina Morris/
Kristina Morris
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
RESPONSE GUIDANCE