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: 4/24/2013

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the following issues as outlined below:

 

1)     Claim of Ownership of Prior Registrations and

2)     Clarification of Identification and Classification of Goods and Services Required.

 

15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03. Applicant should also note the information regarding Sections 1(b) and 44(d) to which applicant may respond.

 

Search of the Office Records

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).

 

1) Claim of Ownership of Prior Registrations Required

If applicant owns U.S. Registration Nos. 1103535, 1409644, 1763089, 1796018, 1820077, 1834807, and 3158142, 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. 1103535, 1409644, 1763089, and others.

 

2) Clarification of Identification and Classification of Goods and Services

Where discussed below, the identification of goods is 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. 

 

Also as noted below, the applicant has classified goods and services incorrectly. The suggestions below include the correct International Class for the relevant goods and services.  Accordingly, applicant must (1) add one or more of the suggested International Class(es) to the application, and reclassify the above goods and/or services therein, or (2) delete the goods and/or services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more International Classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Please note that as highlighted below, some of the wording needs further clarification to determine the proper International Class; therefore, the applicant may add additional or different International Classes from those suggested, depending on how the applicant clarifies the wording.

 

Applicant should also note that the wording “retailing” and “selling” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  To be a service, an activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” is not a service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.

 

Therefore, applicant must reword to clarify that the services are “retail store services,” “online retail store services,” or similar services.

 

Additionally, the wording “education” is indefinite and must be clarified because it does not specify (1) how the educational services will be provided (e.g., via classes, seminars, workshops) or (2) the subject matter of the educational services.  See TMEP §1402.01. 

 

Therefore, applicant must amend the identification to specify the form of delivery of the “education,” and the subject matter of these services. 

 

Similarly, the wording “information” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” in International Class 35; “providing information regarding financing and insuring an automobile” in International Class 36; and “providing information regarding the repair and maintenance of automobiles” in International Class 37.

 

If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing online information in the field of health care information” in International Class 44.

 

Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information.”

 

The following suggested identification contains further guidance in bold and/or brackets.  Applicant may adopt any or all of the suggestions so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services.

 

International Class 29—Processed potatoes and potato products being {applicant must specify the goods by their common commercial name as found in International Class 29, for example, “French fries”, or specify and reclassify accordingly}, {“pizza” is in the wrong class}, potato snack foods, {applicant must specify the type of snack foods consistent with International Class 29, for example, “soy-based”, or specify and reclassify accordingly} snack foods, {“frozen and prepared desserts and pastries” are in the wrong class}, {“ice cream” is in the wrong class}, appetizers being {applicant must specify the type of appetizers consistent with International Class 29, for example, “breaded and fried jalapeno peppers” or specify and reclassify accordingly}, dips, {applicant must specify that the goods are processed in some way to remain in International Class 29, for example, “preserved”; alternatively, applicant may reclassify “fresh fruits and vegetables” in International Class 31} fruits and vegetables, frozen prepared meals consisting primarily of {applicant must specify the primary ingredient in order to determine classification; “meat, fish, poultry, or vegetable” would be classified in International Class 29}, {“breakfast foods” is indefinite and likely misclassified; applicant must specify the common commercial name of the goods and classify accordingly}, {“French toast, pancakes and waffles” are classified incorrectly}, prepared meals and entrees consisting primarily of {applicant must specify the primary ingredient in order to determine classification; “meat, fish, poultry, or vegetable” would be classified in International Class 29}, {“prepared sandwich products” appears to be in the wrong class}, non-alcoholic beverages being fruit based food beverages {applicant must specify the nature of the beverages consistent with International Class 29, or specify and reclassify accordingly}, {“smoothies” are classified incorrectly}, {applicant must specify the type of powder consistent with International Class 29, for example, “milk”, or specify and reclassify accordingly} powders and {applicant must specify the type of mixes consistent with International Class 29, for example, “non-alcoholic egg nog”, or specify and reclassify accordingly} mixes, soups

 

International Class 30—Pizza {reclassified from International Class 29}; frozen and prepared {applicant must specify the type of “desserts”, for example, “cashew-based”} dessert and pastries and ice cream {reclassified from International Class 30}; breakfast foods being breakfast cereals {applicant must specify the common commercial name of the goods and classify accordingly}, French toast, pancakes and waffles {reclassified from International Class 29}; prepared sandwiches {reclassified from International Class 29; also deleted “products” as it creates ambiguity}

 

International Class 32—Smoothies {reclassified from International Class 29}

 

International Class 35—food service services, namely, retail store services featuring foods for use in food services channels of trade; vending machine services featuring food, {“information and education”—the nature of these services must be specified and classified accordingly}, {clarified “operation of a website” and reclassified based on suggestion}; and promotional contest services for promoting the goods and services of others {applicant must specify the nature of the contests and classify accordingly} and coupon services being the distribution of coupons for the promotion of the goods and services of others {applicant must specify the nature of the services

 

International Class 41—Education, namely, {applicant must specify the form of the education and the subject matter, for example, “classes in the field of early American history” or “seminars featuring cooking instruction”}

 

International Class 42—Operation of a website, namely, hosting a website on the Internet for others {specified and reclassified}

 

International Class XXX—information services, namely, providing information in the field of {applicant must specify the field of information, which will dictate the classification of services}

 

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.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

In responding to this requirement, the applicant may add classes to the application. For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Section 44(e):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Section 1(b) and Section 44(d)

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  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).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b). 

 

Response Guidelines

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  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.

 

 

/Marilyn D. Izzi/

Trademark Examining Attorney

Law Office 112

marilyn.izzi@uspto.gov

P:(571) 270-1523

F:(571) 270-2523

 

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 4/24/2013 FOR U.S. APPLICATION SERIAL NO. 85814042

 

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 4/24/2013 (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.