United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79295005
Mark: THYSSENKRUPP
|
|
|
Correspondence Address: thyssenkrupp Intellectual Property GmbH
|
|
|
Applicant: thyssenkrupp AG
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
International Registration No. 1545329
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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 OF THE RECORDS
IDENTIFICATION
The identification of goods and services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and services. If the services have no common commercial or generic name, applicant must describe the nature of the goods and services as well as their main purpose, channels of trade, and the intended consumer(s).
The identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). In addition, applicant is advised to delete or modify any duplicate entries in the identification of goods and/or services. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
The examining attorney has provided some general guidance by International Class below.
International Class 9
The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The wording “MEMORY STICKS” in the identification of goods is the plural of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No(s). 2283810 and 2863003.
International Class 25
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Examples of acceptable identifications for clothing and/or apparel in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after clothing” and then listing the specific types of clothing items.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
International Class 35
The activities identified as “Wholesaling and retailing” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring __{specify”},” “retail distributorships in the field of __specify”, and “retail outlets featuring __{specify}”. See TMEP §§1301.01(a)(ii), 1402.11.
In addition, the wording “electronic publications provided from databases or the internet” appear to identify online downloadable publications in International Class 41. As stated previously, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services 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 and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Class(es) 35 only, the class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c).
Advisory and Suggestions
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).
The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).
The following is an amended version of applicant’s identification of goods and services that complies with the above-mentioned clarification requirements, with additions and alterations in bold type. The underlined wording includes additional guidance and suggestions and the wording appearing with a strikethrough should be deleted from the identification.
Applicant may adopt the following identification of goods and services, if accurate:
International Class 9: Spectacles; sunglasses; swimming and diving goggles; cases and cords for
sunglasses and spectacles; binoculars; magnets and decorative magnets; directional compasses; apparatus for recording, transmission, editing, mixing and reproduction of images and sound; radios;
compact disc players; dvd players; mp3 players; players for digital music; minidisk players; loudspeakers; headphones; microphones; remote control devices for {indicate specific devices, e.g. radios, televisions, stereos}; voice-activated remote control for {indicate specific devices, e.g. radios, televisions,
stereos}; personal digital assistants (pdas); computers; data-processing apparatus; computer keyboards; bags for carrying computers; computer mouse [data
processing equipment]; mouse mats; mouse pads; electronic pocket translators; electronic note books and organisers; mobile telephone cases and holders; special cases for carrying cellular phones;
recorded video game software; joysticks; recorded computer software, namely, computer games software; recorded computer programs for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.};
downloadable computer software for creating searchable databases of information and data; recorded and downloadable magnetic data carriers
featuring {indicate subject matter}; digital and analog recording media for sound or image recordings , namely, {indicate nature of goods, e.g.,
downloadable audio and video recordings} featuring {indicate subject matter}; blank dvds, floppy disks, optical discs, compact discs, mini-discs and cd roms; pre-recorded dvds, floppy disks, optical discs, compact discs, mini-discs and cd roms featuring audio and video recordings featuring music and artistic performances; hologram apparatus; magnetically encoded magnetic
charge/debit cards; blank smart cards; memory sticks; microchip cards; memory cards, magnetically encoded
credit and debit cards, smart cards, magnetically encoded pre-paid calling telephone cards with magnetic strips and prepaid magnetically encoded cards and smart cards for mobile telephones; publications in electronic from, namely, {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded on computer media }; audio receivers; amplifiers; magnetic encoded identity bracelets; magnetically encoded debit cards for use
with automatic banking machines
International Class 16: Paper, cardboard and goods made from these materials, namely, transfers
in the form of decalcomanias, stickers, desktop cabinets for stationery being office requisites, place mats of paper and
cardboard, namely, mats for beer glasses; packing bags of paper and plastic, paper bags; {specify type belonging
in Class 16, e.g., writing} pads [stationery]; letter writing paper; printed matter, namely, books,
prospectuses, brochures, magazines, newspapers and periodicals in the field of {specify subject matter}; printed photographs, postcards,
tickets, entry tickets, calendars and picture cards; printed catalogues
in the field of {indicate specific field of use}; writing instruments, namely, pencils, ball pens and
fountain pens; artists' materials, namely,{indicate specific goods belonging in Class 16, e.g., artists’ brushes}, paint brushes; office requisites,
namely, {indicate specific goods belonging in Class 16, e.g., staplers}; thumbtacks; stamps and ink pads for stamps; note pad holders; printed educational and
teaching materials in the field of {specify area of use}; materials of cardboard, paper or plastic for use in packaging, namely, {specify the nature
of the goods belonging in Class 16, e.g., plastic bags for packaging, cardboard and paper for packaging}; printers' type; flags and pennants of paper; adhesives for stationery purposes;
tablemats of paper for glasses, mugs, cups, bottles, coffee and tea pots; paperclips; tablecloths of paper; table napkins of paper; paper bags; invitation cards; greeting cards; gift wrap paper;
tablemats of paper; rubbish bags of paper or plastic; bags for preserving foodstuffs, namely, {specify the nature of the goods belonging in Class 16, e.g., plastic food storage
bags for household use}; paper coffee filters; non-textile labels, namely, {indicate goods belonging in Class 16, e.g., paper
labels}; paper towels; hygienic paper; tissues of paper for removing make-up; cardboard boxes for pocket handkerchiefs; paper towels; writing materials and school supplies, namely, {specify type of writing materials and school supplies, e.g. folders, book marks}; typewriter paper, copying paper (stationery); pouches of paper for packaging;
themed pads of paper; notepads; writing books; notepaper; paper for writing; rough paper; files, cardboard archive boxes; folders for papers; book covers; bookmarkers; lithographs; framed and unframed art pictures in the nature of paintings; printed colouring books; drawing pads; printed game and
puzzle books; printed puzzle books; luminous paper; self-adhesive labels not of textile; crepe paper; tissue paper; staples for offices; rubber stamps; paint boxes
{specify, e.g., for use in schools and brushes sold as unit}; chalks; decorations for pencils (stationery articles); drafting templates; printed teaching material
in the field of {specify area of use}; white boards, namely, dry erase writing boards; persona events programmes;
event albums; address books; personal organizers; personal diaries (journals), printed roadmaps; tickets; non-magnetic encoded
discount cards; printed cheques; printed coupons; printed timetables; printed comics; printed collectors' cards;
stickers [stationery]; albums for stickers; printed posters; photographs; photograph albums and books; signboards and advertisement boards of paper or
cardboard; transfers (decalcomanias); thermo-adhesive labels not of textile, not for applying to fabric; office requisites (other than furniture); erasers; pencil sharpeners; stands for
pens and pencils; paper-clips; drawing rulers; adhesive tapes for stationery purposes; adhesive tape dispensers; staples for offices; printed sewing patterns;
stencil plates; clipboards; holders for note pads; bookends; {__specify type, e.g. address, marking} stamps; telephone calling cards, not
magnetically encoded; printed geographical maps; printed non-magnetically encoded cheque, customer and account cards of paper or cardboard;
credit cards, not magnetically encoded; printed tickets, not magnetically encoded; cases for cheques; printed non-magnetically encoded credit and customer cards of paper or cardboard
International Class 18: Leather and imitation leather; leather cords;
umbrellas, parasols; sports bags (except those adapted for the goods they are designed to carry); casual carry-all bags; sack packs;
backpacks; transport travelling bags; satchels; bum-bags; handbags; leather pouches; ball-shaped carry-all bags of leather; beach bags;
garment bags for travel; suitcases; straps for suitcases; travelling bags; briefcases made of leather, vanity cases, not fitted; toiletry bags sold
empty; key cases [leatherware]; briefcases; wallets; purses; pet collars and leashes; ID business card holders in the nature of card
cases
International Class 25: Clothing, namely, {indicate specific items belonging in
Class 25}; shoes; headwear; shirts; knitted clothing, namely, {indicate specific items belonging in Class 25, e.g., knitted shirts};
jerseys, t-shirts; polo shirts; undershirts; gowns; skirts; underwear; swimming suits, shorts; trousers; sweaters; caps being headwear; hats; visor caps; neck scarves
[mufflers]; scarves; sweat shirts; jackets [clothing]; sports jackets; winter jackets; blazers; waterproof clothing waterproofs, namely, {indicate specific items
belonging in Class 25, e.g., waterproof jackets}; coats; uniforms; workwear, namely, {indicate specific items belonging in Class 25, e.g., work boots}; ties; wrist
bands as clothing; headbands [clothing]; gloves; aprons; bibs, not of paper; pyjamas; playclothes for infants and children , namely, {indicate
specific items belonging in Class 25, e.g., shirts and shorts}; socks and stockings; garters; waist belts; braces
International Class 35: Wholesale and retail store services featuring
metal key rings and chains, money clips, not of metal, figurines, ornaments, statues, statuettes, sculpture and trophies, badges of metal for vehicles, coathooks and bag hooks of metal, locks of
metal, boxes of common metal, metal nameplates, identification tags of metal, medals, all the aforesaid goods of common metal or their alloys, presentation cans of metal, sunglasses; Wholesale and retail store services featuring diving and swimming goggles, cases and cords for sunglasses and glasses, binoculars, magnets, decorative magnets, directional
compasses, apparatus for recording, transmission, processing, mixing and reproduction of images and sound, radio receivers, disc players, dvd player devices, mp3 players, players for digital music,
md player; Wholesale and retail store services featuring speakers, headphones, microphones, remote controllers, voice-activated remote control, personal digital assistant
devices, computers, data-processing apparatus, computer keypads, sling bags for carrying computers, mice (data processing equipment), mousepads, mouse pads, pocket translators, electronic,
electronic notebooks and organisers, cases and covers adapted for mobile phones, special cases for carrying cellular phones; wholesaling and retailing of video games, video game apparatus, games
consoles, joysticks, computer software (recorded programs), including games software, computer programs, databases, pre-recorded dvds, floppy disks, optical discs, compact
discs, mini-discs and cd roms featuring audio and video recordings featuring music and artistic performances; Wholesale and retail store services featuring
hologram apparatus, magnetically encoded magnetic charge/debit cards, blank smart cards, microchip cards, memory cards, magnetically encoded credit and debit cards,
smart cards, magnetically encoded pre-paid calling telephone cards with magnetic strips and prepaid magnetically encoded cards and smart cards for mobile telephones, electronic publications
provided from databases or the internet, audio receivers, sound amplifiers, magnetic encoded identification bracelets; Wholesale and retail store services
featuring electric fairy lights for festive decoration, lanterns, torches, hot-water bottles, Christmas tree ornaments for illumination; Wholesale and retail store services featuring precious metals and their alloys and goods in precious metals or coated therewith, namely, jewellery, precious stones, jewellery, in
particular bracelets, broches, rings and earrings, horological and chronometric instruments, alarm watches, wristwatches, pocket watches and watch bands, stock pins, decorative pins for hats, cases,
figurines (statuettes), statues and sculptures, all being of precious metal, jewellery chains, tie pins and tie clips, cuff-links, key tags, jewellery boxes, shopping trolley tokens of metal,
medaillons, commemorative medals of precious metal, key tags, coins, coins, non-monetary, medallions and badges of precious metal; wholesaling and retailing of paper,
cardboard and goods made from these materials, namely, name tags, luggage labels, decalcomanias, stickers, stickers (stationery), containers for
stationery, mats for beer glasses, bags of paper or plastic for packaging, paper bags, paper pads, stationery paper, printed matter, books, newsletters, magazines, pamphlets, and brochures, greeting
cards, prospectuses, brochures, magazines, periodical publications, newspapers, photographs, postcards, passenger tickets, entry tickets, calendars, cards, catalogs; Wholesale
and retail store services featuring writing instruments, in particular pencils, ball-point pens, fountain pens, artists' materials, paint brushes, office requisite, thumbtacks, stamps and
stamp pads, note holders, instructional and teaching material, cardboard articles, paper and plastic, printers' type, flags of paper, adhesives for stationery, coasters of paper for glasses, bowls
(basins), cups, bottles, coffee and tea pots, paperclips, table cloths of paper, paper napkins, bags of paper, invitation cards, greeting cards, gift wrapping paper, tablemats of paper,
rubbish bags of paper or of plastic, food preserving bags, coffee filters of paper, labels [other than textile], towels of paper, toilet paper, napkins of paper for removing make-up, boxes for
pocket handkerchiefs, tissues of paper, babies diapers of paper; Wholesale and retail store services featuring writing materials and school supplies [except
apparatus], typewriter paper, copying paper [stationery], envelopes, themed pads of paper, blocks of paper, writing books, note papers, writing paper, rough paper, stapling presses, file
folders, folders for papers, scarves, book marks, lithographs, paintings [pictures], framed or unframed, colouring books, drawing pads, game and puzzle books, puzzle books, luminous paper,
self-adhesive labels not of textile, crepe paper, tissue paper, staples for offices, rubber stamps, paint boxes, chalks, decorations for pencils (stationery articles), printing templates,
printed teaching materials, magnetic boards; wholesaling and retailing of event programmes, event albums, address books, organizers, secrets books, roadmaps, tickets, scratch cards, discount cards,
cheques, vouchers, printed timetables, comics, collectors' cards, stickers, sticker albums, posters, photographs, photo albums and photo books, signs, advertising materials made of paper or
cardboard, decalcomanias, thermal adhesive labels, not of textile, office requisites, except furniture, rubber erasers, pencil sharpeners, stands for pens and pencils, paper
clips, thumbtacks, drawing rulers, adhesive tapes for stationery purposes, adhesive tape dispensers, staplers, sewing patterns, stencil plates, document files, lap packs, note-pad holders, bookends,
sealing stamps, telephone cards, cards for automatic teller machines, geographical maps and playing cards, cheque, customer and account cards of paper or cardboard,
non-encoded credit and customer cards of paper or cardboard, non-magnetically coded credit cards, encoded notes, cases for cheque and bank cards; wholesaling and
retailing of leather and imitations of leather, leather laces, umbrellas, parasols, sport bags (other than those adapted for products they are designed to contain), casual bags, packsacks,
rucksacks, transport bags, school satchels, bumbags, handbags, pouches of leather, balloon-shaped bags of leather, beach bags, garment covers for travel, valises, straps for suitcases, travelling
bags, briefcases, vanity cases, not fitted, toilet bags, key cases [leatherware], briefcases, wallets, purses; Wholesale and retail store services featuring pet
collars and leads, identity card cases, shopping bags of plastic; Wholesale and retail store services featuring mirrors (looking glasses), showcases in the nature of furniture, statues, figurines, trophies, souvenirs of wood, flour wax, plaster or plastic, identification plates [not encoded], in particular nameplates, key
cards [not encoded], all the aforesaid goods of plastic, cushions, cushions, being vehicle accessories, sleeping bags for camping; Wholesale and retail store services
featuring of furniture, interior and exterior seating, furniture racks, displays of goods, fixed towel dispensers, not of metal, coathangers, fans for personal
use; wholesaling and retailing of inflatable and rigid publicity objects of plastic, banners and advertising matter of plastic, bookshelves, book holders, key rings (trinkets and fobs), of
plastic, straps of plastic, bracelets of plastic, frames for pictures; wholesaling and retailing of utensils and containers for household and kitchen use, non-electric, beer jugs, beer mugs, bowls
(basins), drinking cups and drinking glasses, decanters, trays and plates, coasters for glasses or bottles, saucers, glasses, teapots, oven gloves, gloves for household purposes, botlle
openers, cork removers, bottle openers, bottles, vacuum flasks, non-electric containers for food and beverages; Wholesale and retail store services featuring towel
dispensers of metal, hair brushes, hair combs, toothbrushes, dental floss, statues, sculpture, figurines and trophies made of porcelain, earthenware or glass, decorative flasks, for cosmetic use,
waste paper baskets, feed bowls and cages for pets, commemorative plaques of precious metal; wholesaling and retailing of sleeping bags [quilted], sheeting, down coverlets, bed blankets,
cushion covers, drapery, shower curtains, curtain material, lingerie, bath linen, dish towels, blankets, handkerchiefs of textile, wall hangings; Wholesale and retail store
services featuring [flags, flags for vehicles, pennants, pennants, table linen, not of paper and labels of fabric; Wholesale and retail store services featuring clothing, shoes, headgear, shirts, knitwear clothing, pullovers, t-shirts, polo-shirts, vests, gowns, skirts,
underclothes, bathing suits, shorts, trousers, sweaters, peaked caps, hats, peaked caps, scarves, scarfs, sweatshirts, jackets, sports bibs, blazers, waterproof clothing, coats, uniforms, neckties,
wristbands, headbands, gloves, aprons (clothing), non-paper bibs, sleepsuits, playclothes for infants and children, socks and stockings, garters, belts, suspenders; wholesaling and retailing
of games, games and playthings, balls, board games, tables for indoor football, dolls and toy animals, stuffed animals, toy vehicles, puzzles, balloons, inflatable toys, playing cards, confetti;
Wholesale and retail store services featuring gymnastic and sporting articles, not included in other classes, gym equipment, electronic hand held games, other than
those for use with television receivers only, robots [playthings] for use in entertainment, coin operated video games for amusement arcades [arcade games], scale models of aeroplanes,
toys for pets, electronic games with liquid crystal dispays, decorations for christmas trees; Wholesale and retail store services featuring sausage, meat, butter, cooked
fruits and vegetables, fat-containing mixtures for bread slice, fruit jellies, fruit salad, fruit snacks, compotes, milk products, yogurt, curds, potato crisps, processed
nuts, edible candy, candies, chocolate, chocolate bars, biscuits, bread, pastries, ice creams, pastries, honey, coffee, cocoa, tea, chewing-gum, liquorice confectionery, pralines, marzipan, popped
popcorn, pasta, condiments, sugar; Wholesale and retail store services featuring non-alcoholic drinks, fruit drinks and fruit juices, concentrates, syrups and powder for
waking soft drinks, mineral and aerated waters, other non- alcoholic drinks, energy beverages, isotonic beverages, hypertonic drinks, hypotonic drinks, vegetable and fruit juice beverages, fruit and
vegetable juices, iced fruit drinks, frozen, flavored, non-aerated non-alcoholic beverages, beverages enriched with vitamins, not for medical purposes; Wholesale and retail store services featuring beers, lagers and ales, non-alcoholic beers, alcoholic beverages, except beer, wine, fortified wine, alcoholic
mixed beverages, other than beer-based, distilled beverages, liquors, alcoholic energy drinks, cigarette lighters, matches, match boxes, smoker's ashtrays, to enable customers the selection
thereof; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; commercial
management of the licensing of goods and services, for others
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.
EMAIL ADDRESS REQUIRED
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
U.S.-LICENSED ATTORNEY’S RESPONSE REQUIRED
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.
/Josette M. Beverly/
Josette M. Beverly
Examining Attorney
Law Office 115
571-272-9399
Josette.Beverly@uspto.gov
RESPONSE GUIDANCE