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. 79305441
Mark: MLILY THE LEGEND OF COMFORT
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Correspondence Address: JIANGSU NEW&HIGH TRADEMARK AGENCY |
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Applicant: HEALTHCARE CO., LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1578287
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).
Results of Trademark Act Section 2(d) Search
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 that Applicant Must Address
1. Requirement that Applicant be Represented by a U.S.-Licensed Attorney and that Applicant Provide an Email Address
2. Requirement to Clarify the Identification of Goods and Services
Requirement that Applicant be Represented by a U.S.-Licensed Attorney and that Applicant Provide an Email Address
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.
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).
Requirement to Clarify the Identification of Goods and Services
THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR GOODS AND SERVICES INDICATED BELOW.
International Class 20
The wording “bedding, except linen” in the identification of goods is indefinite and must be clarified to specify the types of bedding other than linen in International Class 20 using the common commercial or generic names for the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
International Class 24
The wording “cotton-padded mattress (bedding fabric)” in the identification of goods is indefinite and must be rewritten to clarify the nature of the goods in International Class 24, in addition to deleting the parentheses and incorporating the parenthetical information into the remainder of the description. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.12.
The wording “sheets (textiles)” in the identification of goods is indefinite and must be amended to clarify the type of the textile sheets in International Class 24, in addition to deleting the parentheses and incorporating the parenthetical information into the remainder of the description. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.12.
International Class 35
The wording “administrative services for the relocation of businesses” in the identification of services is indefinite and must be clarified to specify the type of administration services in International Class 35. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Scope Advisory
Suggested Amendments
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed
for the identification of goods and/or services. If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with
a line through it such as this: strikethrough. Applicant should enter its amendments in standard font. If applicant wishes to accept the
suggested deletions, applicant must manually delete the struck through wording in any USPTO response form. Copying and pasting the language below will
not result in deletion of the struck through wording, which will remain within the identification.
Applicant may adopt the following identification of goods and services, if accurate:
International Class 20: Furniture; mats for infant playpens; bedding, except linen, namely, {specify types in Class 20 using generic names, e.g., mattresses}; latex mattress; beds; sofas; furniture fittings, not of metal; cushions; pillows; mattresses
International Class 24: Bed blankets; wall hangings of textile; cotton-padded mattress (bedding fabric) fabric bedding, namely, mattress pads; tablecloths, not of paper; bath mat; quilt; towelling
coverlets; pillowcases; textiles, namely, bed sheets (textiles); mattress covers
International Class 35: Advertising; business administrative services for the relocation of businesses; commercial administration of the licensing of the goods and services of others; providing business information via a web site; import-export agency services; sales promotion for others; provision of an online marketplace for buyers and sellers of goods and services; personnel management consultancy; administrative processing of purchase orders; business auditing
For assistance with identifying 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.
Response Information
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
linda.lavache@uspto.gov
RESPONSE GUIDANCE