UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/19/2013

 

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, 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS – NO SIMILAR REGISTERED OR PENDING MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

I.          PARTIAL REQUIREMENT FOR CLARIFICATION OF THE IDENTIFICATION OF GOODS – PARTICULAR WORDING IN CLASS 005 ONLY

 

As filed, the identification of goods in Class 005 appears as follows:

 

• International Class 005: Dietary and nutritional supplements; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Dietary supplements; Food for medically restricted diets {indefinite – does not adequately specify types of foods and does not clearly indicate that the foods are adapted for medical use}; Herbal supplements; Homeopathic supplements; Meal replacement bars {too broad – includes goods in more than one International Class}; Meal replacement powders{too broad – includes goods in more than one International Class}; Mineral nutritional supplements; Nutritional energy bars for use as a meal substitute {indefinite – does not adequately specify the type of applicant’s goods}; Nutritional supplement in the nature of a nutrient dense, protein-based drink mix; Nutritional supplements in the form of nutritionally fortified beverages, calcium, electrolyte drinks for therapeutic purposes, energy bars, lecithin, minerals, and vitamins {indefinite -- does not adequately specify the form of the referenced substances}; Nutritionally fortified beverages; Nutritionally fortified water; Vitamin and mineral supplements; Vitamin enriched water; Vitamin fortified beverages; Nutritional supplements, namely, anti-oxidant supplements in the form of pills, powders, creams and beverages; Vitamin and nutritionally fortified beverages containing biological accelerants for use in restoring energy levels and for use in revitalizing and restoring the immune system; Mineral supplement in the form of a drink; Tonics, namely, nutritional supplements; Nutritionally fortified beverages for use as supplements; Food supplements, namely, dietary fiber, drink mixes used as meal replacement, flax seed oil {indefinite/too broad – “drink mixes used as a meal replacement” does not adequately specify the nature of applicant’s goods and may include goods in more than one International Class}; Soy protein for use as a nutritional supplement in various powdered and ready-to-drink beverages; Herbal supplements and vitamins

 

The above-bolded wording in the identification of goods is indefinite and must be clarified because it does not adequately specify the types of goods in Class 005 and because, where indicated, it is too broad and encompasses goods in more than one International Class.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

• International Class 005: Dietary and nutritional supplements; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Dietary supplements; Food for medically restricted diets, namely, dietetic foods in the nature of {indicate types of food, e.g., pasta, crackers, etc.} adapted for medical use; Herbal supplements; Homeopathic supplements; Meal replacement bars, namely, {specify types in Class 005,e.g., chocolate-based and fruit-based meal replacement bars for medical purposes}; Meal replacement powders adapted for medical use; Mineral nutritional supplements; Nutritional energy bars for use as a meal substitute, namely, nutritional supplement energy bars; Nutritional supplement in the nature of a nutrient dense, protein-based drink mix; Nutritional supplements in the form of nutritionally fortified beverages, electrolyte drinks for therapeutic purposes; Nutritional supplement energy bars; Nutritional supplements in the form of {indicate specific form, e.g., capsules, tablets, caplets, powders, syrups, gummies, and gels} containing calcium, lecithin, minerals, and vitamins; Nutritionally fortified beverages; Nutritionally fortified water; Vitamin and mineral supplements; Vitamin enriched water; Vitamin fortified beverages; Nutritional supplements, namely, anti-oxidant supplements in the form of pills, powders, creams and beverages; Vitamin and nutritionally fortified beverages containing biological accelerants for use in restoring energy levels and for use in revitalizing and restoring the immune system; Mineral supplement in the form of a drink; Tonics, namely, nutritional supplements; Nutritionally fortified beverages for use as supplements; Food supplements, namely, dietary fiber and flax seed oil; Drink mixes used as meal replacements, namely, {specify types in Class 005 only, e.g., powdered-fruit flavored dietary supplement drink mix, nutritional supplements in the nature of a nutrient-dense, protein-based drink mix, meal replacement drink mixes specifically adapted for medical use}; Soy protein for use as a nutritional supplement in various powdered and ready-to-drink beverages; Herbal supplements and vitamins

 

• International Class 029: Meal replacement bars, namely, {specify type(s) in Class 029, e.g., fruit-based meal replacement bars}; Meal replacement powders not for medical use, namely, mixes for non-alcoholic fruit-based meal replacement beverages; Drink mixes not for medical use, namely, mixes for non-alcoholic fruit-based meal replacement drinks; Potato chips; Potato-based snack foods; Vegetable-based snack foods

 

• International Class 030: Meal replacement bars, namely, {specify type(s) in Class 030, e.g., chocolate-based meal replacement bars}; Meal replacement powders, namely, mixes for chocolate-based non-alcoholic meal replacement beverages; Drink mixes not for medical use, namely, mixes for non-alcoholic chocolate-based meal replacement drinks; Cakes; Candy; Candy bars; Caramels; Chocolate; Chocolate covered nuts; Chocolate truffles; Cookies

 

• International Class 032 (no changes): Aerated water; Ale; Aloe vera drinks; Aloe vera juices; Beer; Beer-based coolers; Coffee-flavored soft drink; Cola; Concentrates, syrups or powders used in the preparation of soft drinks; Drinking water; Energy drinks; Essences for use in making soft drinks; Flavored waters; Fruit drinks; Fruit flavored drinks; Fruit flavored soft drinks; Fruit juices; Fruit nectars; Fruit punch; Glacial water; Guarana drinks; Isotonic drinks; Juice base concentrates; Lager; Malt beer; Malt liquor; Mineral water; Non-alcoholic beer; Non-alcoholic beverages containing fruit juices; Non-alcoholic beverages, namely, carbonated beverages; Non-alcoholic cocktail mixes; Non-alcoholic cocktails; Nonalcoholic aperitifs; Pilsner; Pop; Porter; Preparations for making beverages, namely, for making soft drinks and fruit drinks; Quinine water; Seltzer water; Soda water; Soft drinks; Soft drinks flavored with tea; Soy-based beverages not being milk substitutes; Sports drinks; Spring water; Stout; Sweet cider; Syrups for making fruit-flavored drinks; Syrups for making soft drinks; Syrups for making whey-based beverages; Table water; Vegetable juices; Water beverages; Whey beverages; Tonic water

 

Identifications of goods 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.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The examining attorney notes that the USPTO periodically revises the U.S. Acceptable Identification of Goods and Services Manual (ID Manual) based on changes to the international classification system and the USPTO’s policies regarding acceptable identifications of goods and services.  See TMEP §1402.14.  Identifications are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed.  See 37 C.F.R. §2.85(e)(1); TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.12. 

Thus, descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

Here, the examining attorney notes that, while some of applicant’s meal replacement bars and dietetic foods may previously have been acceptable as identified in International Class 005, effective January 1, 2012 (prior to the filing of the instant application), meal replacement bars and drinks for medical purposes are in class 005 and those not for medical purposes are in Classes 29-33 depending on the nature of the goods.  Likewise, specified dietetic foods for medical purposes are in class 005 while foods not specifically for medical purposes are classified elsewhere. Guidance on appropriately identifying and classifying such goods is available in the USPTO’s searchable online ID Manual at http://tess2.gov.uspto.report/netahtml/tidm.html and the “Notes” thereto.  The above-suggested amended identification of goods proposed by the examining attorney is crafted in accordance with currently applicable standards.

 

For guidance on writing identifications of goods and/or services, please use the USPTO’s online ID Manual at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

For assistance with identifying and classifying goods and/or services 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.

 

II.        CLAIM OF OWNERSHIP OF PRIOR REGISTRATION

 

If applicant owns U.S. Registration No. 4215550, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No. 4215550.

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  If applicant retains an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The individual(s) signing must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  In such case, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

/Kevin S. Corwin/

Trademark Examining Attorney

Law Office 112

571-270-1521 (Voice)

571-270-2521 (Fax)

Kevin.Corwin@uspto.gov

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/19/2013 FOR U.S. APPLICATION SERIAL NO. 85800621

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/19/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.