To: | BSH Home Appliances Corporation (NBN-IntelProp@bshg.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85401493 - STAR - 2011W03101US |
Sent: | 11/16/2011 11:18:33 AM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85401493
MARK: STAR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: BSH Home Appliances Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 11/16/2011
Applicant is encouraged to email the trademark examining attorney at eli.hellman@uspto.gov to resolve the issues raised below. If the suggestions listed below are acceptable, then the examiner will issue an examiner’s amendment and approve the application for publication.
No Similar Marks to Bar Registration
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
I. Clarification of the Identification of Goods and Services Required
LIMITED TO THE GOODS SPECIFIED HEREIN
The wording “beverage making apparatus, namely, electric beverage machines, espresso making apparatus, beverage dispensers, hot water kettles, and tea pots; ice cream machines” in the identification of goods is indefinite and must be clarified because it could contain goods classified in multiple classes. See TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.
The aforementioned goods are classified based on whether they are electric or manual. It is unclear in the applicant’s current recitation whether the term electric modifies all of the goods. Therefore, the applicant is required to specify that each of the goods are in fact electric, rather than manual, which are classified in class 021.
Descriptions of goods should use the common, ordinary name for the goods. TMEP §1402.01. If there is no common, ordinary name for the goods, applicant should describe the goods using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.
Applicant must substitute parenthesis for commas, as indicated below. An application must specify, in an explicit manner, the particular goods or services 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, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Generally, commas should be used (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.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id.
For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. Id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” Id.
For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant may adopt the following, if accurate:
International Class 007: Household and kitchen machines and equipment, namely, electric kitchen machines and equipment, namely, waste masticators and compressors; dishwashers; structural parts of all aforementioned goods.
International Class 011: Household and kitchen machines and equipment, namely, heating, steam producing, and cooking devices, namely, cooking, baking, frying, grilling, toasting, thawing, and hot-keeping apparatus, namely, domestic cooking ovens, electric and gas ranges, cooktops, warming drawers sold as parts of ovens, ranges and cooktops, electric food immersion heaters; cooking pots with integrated heating, namely, electric cooking pots; microwave appliances, namely, microwave ovens; electric beverage making machines, namely, {indicate the common commercial name for the goods, e.g., electric coffee makers, electric espresso machines}; electric espresso machines; temperature controlled beverage dispensers, electric hot water kettles; and electric tea pots; cooling devices, namely, refrigerators, freezers, combination refrigerator-freezers, deep freezers, ice making machines, ice-cream makers and freezers; ventilation devices, namely, ventilators sold as parts of hoods for ranges, ovens and cooktops, grease filter devices sold as parts of hoods for ranges, ovens and cooktops; extractor devices, namely, extractor hoods; air conditioning devices and devices to improve air quality, namely, air humidifiers, pipes being parts of sanitary facilities; warm water devices, namely, storage water heaters and continuous flow water heaters; kitchen sinks; heat pumps; structural parts of all aforementioned goods.
International Class 035: Arranging and conducting incentive reward programs to promote the sale of domestic appliances by interior designers and trade professionals.
Failure to Respond Will Result in the Abandonment of Particular Goods
If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 011 will be deleted from the application:
Beverage making apparatus, namely, electric beverage machines, espresso making apparatus, beverage dispensers, hot water kettles, and tea pots; ice cream machines
The application will then proceed with the remaining goods and services. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
RESPONDING TO THIS OFFICE ACTION
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.
If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 112
eli.hellman@uspto.gov
571.272.8276
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.