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: 5/3/2013

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

 

 

SEARCH OF OFFICE RECORDS (Advisory)

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).

 

 

Applicant should note the following issue(s) and requirement(s) set forth below.

 

 

IDENTIFICATION AND CLASSIFICATION

The identification of goods is unacceptable as indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  

 

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.  Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a).   For example, “modems and/or monitors” could be read to mean “modems or monitors” and thus it is unclear which goods applicant intends to identify.  Applicant could amend the identification to “modems” alone, or “monitors” alone, or “modems and monitors” if applicable.  Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language. 

 

Periodically the USPTO 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.

 

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.

 

 

Applicant may adopt the following identification (amendments in bold), if accurate: 

• Meat, fish, ham, chicken, game, pork meats; dried, preserved fruits and vegetables, cooked fruits and vegetables; purees, namely, fruit purees, vegetable purees; jams, fruit sauces, namely, cranberry sauce, applesauce, jellies; soups; dried soups; preserves containing mainly meat, fish, ham, chicken and/or game; ready-made, dried, cooked, preserved, frozen meals, mainly composed of meat, fish, ham, chicken or game; potato crisps, mixed dried fruits, processed peanuts, walnuts, hazel nuts, and cashew nuts; mini pork meat appetizers; milk, powdered milk for food purposes; dairy products excluding ice cream, ice milk and frozen yogurt; milk desserts, namely, chocolate milk, milk beverages containing fruits; yogurts, yogurt drinks, mousses, namely, meat-based mousses, vegetable mousses; creams, cream desserts, namely, whipping cream; sour cream, butter, hard cheeses, cheeses, refined cheeses, refined blue cheeses, unrefined soft white cheeses and cheeses in brine, soft white cheese, hard white cheeses, liquid white cheeses, plain cheeses, and flavored cheeses; drinks composed mainly of milk and dairy products, milk drinks where milk is the main ingredient, milk drinks containing fruit; fermented dairy products, plain or flavored, namely, fermented milk; edible oils, olive oil, edible fats; nonalcoholic drinks containing lactic acids (INT. CLASS 29)

 

• Coffee; tea; cocoa; chocolate; coffee-based drinks; cocoa-based drinks; chocolate-based drinks; sugar; rice; puffed rice; tapioca; flours; sweet tarts and pies, salted tarts and pies; pizzas; edible pasta; plain or flavored and/or filled, preparations made with cereals, namely, ready to eat, cereal derived food bars; breakfast cereals; processed food mainly consisting of edible pasta; bread, melba toast, sweet or salted biscuits, wafers, waffles, cakes, and bakery goods, all these products are plain and/or coated and/or filled and/or flavored; bread, biscuits, and cake pastry containing salted or sweet aperitif; confectionery, namely, candy, chocolate, confectionery chips for baking, crystal sugar pieces, fruit jellies, peanut butter confectionery chips; ice cream, edible ices, namely, sorbets, frozen ices, namely, yogurts, frozen flavored water; honey, salt, mustard, vinegar, condiment sauces, sweet sauces, pasta sauces, spices; mousses, namely, chocolate mousses, dessert mousses  (INT. CLASS 30)

 

• Mineral, plain still, and sparkling water; fruit juices, vegetable juices, fruit drinks, vegetable drinks; lemonades, sodas, namely, soft drinks; preparations for making fruit drinks, syrups used in the preparation of soft drinks, non-alcoholic fruit extracts used in the preparation of beverages, non-alcoholic vegetable extracts used in the preparation of beverages (INT. CLASS 32)

 

• Aperitifs, namely, sweet or salted aperitif made of flavored or plain processed potatoes (INT. CLASS 33)

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 33.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services that are classified in at least 4 classes; however, the fees submitted are sufficient for only 3 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The filing fee for adding classes to an application is as follows:

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

 

 

Duplicate of a Registration (Advisory)

Applicant is advised that if applicant amends the identification such that it is identical to U.S. Registration No. 3200640, registration for the instant application would be refused because the USPTO will not issue duplicate registrations.  37 C.F.R. §2.48; TMEP §703. However, applications or registrations with identifications that include some of the same goods/services, but also different goods/services, would not result in duplicate registrations. TMEP §703. 

 

 

 CLAIM OF OWNERSHIP OF REGISTRATIONS

If applicant owns U.S. Registration Nos. 3651257, 3200640, and 3334486, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 3651257, 3200640, and 3334486.

 

 

 

Translation of Foreign Certificate

The applicant must submit an English translation of the foreign registration.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

 

 

FOREIGN REGISTRATION

 The drawing of the mark in the U.S. application is not acceptable because it does not correspond to the mark shown in the foreign registration.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c).   The drawing in the US application appears with specific colors and designs which does not appear in the foreign registration.   It appears that there may be another page to the foreign registration where in the entire mark appears in color and with the design. If such is the case, then applicant should submit that in the applicant’s response along with the English translation.

 

The drawing of the mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB 1988).  However, a mark in a U.S. application can be amended only if the change would not materially alter the mark.  37 C.F.R. §2.72(c); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989); see TMEP §§807.14 et seq., 1011.03.

 

Applicant may not amend the drawing in the U.S. application to conform to the mark in the foreign registration because such an amendment would materially alter the essence or character of the mark in the U.S. application.  In other words, the commercial impression of the mark on the foreign registration is significantly different from that of the mark that appears on the drawing page.  See 37 C.F.R. §2.72(c); TMEP §§807.12(b), 807.14 et seq.

 

Applicant may respond by amending the basis from Trademark Act Section 44 to Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §806.03.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

To amend the basis to Section 1(a) based on use in commerce, applicant must satisfy the following five requirements:

 

(1)  Submit the following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date.”;

 

(2)  Specify the date of first use of the mark anywhere on the goods or in connection with the services;

 

(3)  Specify the date of first use of the mark in commerce as a trademark or service mark;

 

(4)  Submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and/or services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the application, applicant must submit the following statement:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”; and

 

(5)  Submit an affidavit or signed declaration under 37 C.F.R. §2.20, verifying the four preceding requirements.

 

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).

 

To amend the basis to Section 1(b) based on an intent to use the mark in commerce, applicant must provide a statement requesting replacement of the Section 44 basis with Section 1(b).  TMEP §806.03(d).

 

 

 

 Unsigned Application   

The application was not signed and verified, both of which are application requirements.  See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing.  See 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature.  See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

 

STATEMENTS:  The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

DECLARATION:  The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

The following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

 

(1)       A person with legal authority to bind the applicant (e.g., a corporate officer or general partner);

 

(2)       A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

 

(3)       An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

 

37 C.F.R. §§2.33(a), 2.193(e)(1); TMEP §§611.03(a), 804.04; see 37 C.F.R. §§11.1, 11.14.

 

 

 

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

United States Patent and Trademark Office

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 5/3/2013 FOR U.S. APPLICATION SERIAL NO. 85829759

 

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 5/3/2013 (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.