United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1662812

 

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 https://www.uspto.gov/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 https://tsdr.uspto.gov/, 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 USPTO DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO database of registered and pending marks and has 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:

 

·       U.S. Licensed Attorney Required

·       Applicant’s Email Required

·       Description

·       Identification of Goods

                       

U.S. LICENSED ATTORNEY REQUIRED

 

Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney.  37 C.F.R. §2.11(a); TMEP §601.01(a).  An applicant whose domicile is located outside of the United States or its territories 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); TMEP §§601, 601.01(a).  In this case, applicant’s domicile is identified in the application as outside of the United States or its territories.  For more information, see the U.S. Counsel webpage at https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney.  

 

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/ccr/car.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action.  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); TMEP §604.01.

 

APPLICANT’S EMAIL 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); TMEP §803.05(b).  This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application.  See TMEP §803.05(b). 

 

DESCRIPTION

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate: 

 

The mark consists of the design of a brown bear standing with the word “BEAR” written across its chest with a small green fig leaf in the middle of the letter “A”; a larger green fig leaf appears on the lower portion of the bear; the white appearing in the mark represents transparent areas and is not part of the mark.

 

IDENTIFICATION OF GOODS

 

Applicant must clarify some of the wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the exact nature of the goods.  Further, this wording could identify goods in more than one international class. 

 

In addition, applicant has included the term “and/or” in the identification of goods in International Class 029.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods.

 

An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” deleted and the goods specified using definite and unambiguous language. 

 

Moreover, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods in International Class 030.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Thus, in this case, applicant should delete the colons (:) in the identification of goods in International Class 030. 

 

Finally, the word “popsicles” in the identification of goods in International Class 030 is the plural of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this word 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 attached U.S. Registration No. 2421400. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods and exclude proprietary or potentially-proprietary wording, such as a registered term.  See TMEP §§1402.01, 1402.09.  The misspelling or phonetic equivalent of a registered mark should similarly be excluded, unless it is the common name of the goods.  TMEP §1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Madrid Applicants

 

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a double line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following identification, if accurate:

 

International Class 029:  Preserved, dried, cooked, frozen and baked fruit AND and/or vegetables; fruit AND and/or vegetable-based snack food; vegetable salad; fruit salad; jellies FOR FOOD; jams; compotes; milk, dairy products, NAMELY, __________ {please specify goods in International Class 029 only, using common commercial or generic names, e.g., dairy-based beverages, dairy-based dips, butter}; yogurt, yogurt-based snacks, NAMELY, __________ {please specify goods in International Class 029 only, using common commercial or generic names, e.g., custard style yogurts, drinking yogurts, yogurt covered raisins}; yogurt-based beverages

 

International Class 030:  Cereal-based snacks FOODS; wholegrain PROCESSED cereals that may ALSO contain: oat flakes, rice, nuts or seeds and honey or fruit extract mixture; WHOLE GRAIN-BASED snack foods consisting mainly of whole grains that may ALSO contain: oat flakes, rice, nuts or seeds and honey or a mixture of fruit extracts also including fruits; breakfast cereals; oat porridge; porridge consisting principally of oats also including fruits; ice cream, frozen yogurt, FROZEN CONFECTIONS, NAMELY, FREEZER POPS popsicles; confectionery products, NAMELY, __________ {please specify goods in International Class 030 only, using common commercial or generic names, e.g., candy, chocolate, pastila}; biscuits and cookies

 

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).

 

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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) 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.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Mariam Aziz Mahmoudi/

Trademark Examining Attorney

LO 115

United States Patent & Trademark Office

Tel. (571) 272-9733

mariam.mahmoudi@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 an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

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