Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 11/22/2013

 

This letter responds to applicant’s communication of October 24, 2013. In the Office action of April 24, 2013, the following requirements were made: 1) Claim of Ownership of Prior Registrations Required and 2) Clarification of Identification and Classification of Goods and Services Required.  But for the claim of a registration that is now cancelled, the applicant has satisfied the first requirement. TMEP §§713.02, 714.04. The requirement to clarify and properly classify the identification of goods and services is also partly satisfied. A portion of the amendment is unacceptable. Therefore, the requirement is continued and maintained.

 

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and maintained:

 

Clarification of Identification and Classification of Goods and Services Required

Unless discussed herein, the amended identification is acceptable.

 

As a threshold matter, applicant has used “and/or” and “or” throughout the identification.  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.  Where indicated in the examples below, the use of “and/or” and “or” create ambiguity and must be changed to “and.”

 

In International Class 29, the wording “fresh . . . potatoes, baby potatoes, and sweet potatoes” is misclassified as fresh produce is classified in International Class 31. Therefore, applicant may either add International Class 31 or delete “fresh” from the wording “Processed potato and potato products namely, baked, roasted, mashed, dried, instant, fried, French fried, battered, extruded, fresh, chilled, packaged and frozen potatoes, baby potatoes and sweet potatoes.” See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. 

 

The wording “chilled” and “packaged” in the phrase “processed potato and potato products namely, baked, roasted, mashed, dried, instant, fried, French fried, battered, extruded, fresh, chilled, packaged and frozen potatoes, baby potatoes and sweet potatoes” must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, chilled and packaged potatoes may be fresh potatoes, which are classified in International Class 31, or processed potatoes, which are classified in International Class 29. Therefore, the applicant must specify whether the goods are processed or fresh and classify accordingly.

 

Similarly, the applicant has classified “taquitos,” “spring rolls,” “quesadilla rolls,” “dumplings,” “samosas,” “frozen and prepared non-dairy desserts, namely, desserts made of fruits, frozen fruits, and fruit salad,” “appetizers made from vegetables, meat, fish, poultry, cheese, and potato, namely, taquitos, spring rolls, quesadilla rolls . . . dumplings, samosas,” and “sauces used as dips”  in International Class 29; however, the correct classification is in International Class 30. Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application.  The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services.  37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

For the wording “breakfast foods, namely, meat, fish, seafood, poultry, meat extracts, fruits, vegetables, eggs, potato, and/or cheese based breakfast foods,” applicant must identify the foods by their common commercial name consistent with International Class 29, or specify and reclassify accordingly. See TMEP §1402.01. Additionally, for the wording “breakfast patties containing egg, meat, vegetables or cheese, and eggs,” applicant must clarify if the patties are made primarily of egg and also contain the other ingredients, because as currently worded, it is unclear. Id.

 

Turning to International Class 30, the wording “powders and mixes used in preparation of non-alcoholic beverages, soft drinks and smoothies” is indefinite and likely misclassified. See TMEP §§1402.01, 1402.03.  Preparations for making beverages are classified by the type of beverage they make. Therefore, if the powders and mixes are used to make beverages found in International Class 30, for example, tea-based beverages, the goods may remain in International Class 30. However, as “soft drinks” and “smoothies” are classified in International Class 32, the preparations for making those beverages must also be classified there.

 

Regarding International Class 35, the applicant should avoid using the term “wholesaling”, but rather state what aspect of “wholesaling” is being provided. Additionally, for the wording “informational services, namely, providing information in the field of food, healthy eating and nutrition through the use of printed material, electronic, electronic materials or through websites; information services, namely, providing a website featuring information in the field of food, healthy eating and nutrition,” the applicant has grouped topics that may not be classified in the same International Class. Applicant must further define what is meant by providing information about food and classify all the informational services properly by subject matter. TMEP §1402.11(b).

 

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 potato and potato products namely, baked, roasted, mashed, dried, instant, fried, French fried, battered, extruded, chilled processed, packaged processed and frozen potatoes, baby potatoes and sweet potatoes; processed potato specialties, namely, crisps, chips, potato wedges, diced hash browns, hash brown patties, lattice-cut chips, potato patties, potato skins and shells, stuffed potato skins and shells, diced potato cubes, potato puffs, potato croquettes, instant potato flakes, mashed potato mix and peeled potatoes; snack foods, namely, meat, fish, poultry, meat extracts, fruit, vegetables, egg, cheese, and potato based snack foods; snack foods made from vegetables, meat, fish, poultry, cheese, and potato, namely, hash brown sticks, breaded and battered onion rings and straws, breaded and battered vegetables, battered cheese, cheese sticks, pates and seafood mousses; appetizers, namely, meat, fish, poultry, meat extracts, fruits, vegetables, egg, cheese, and potato based appetizers; appetizers made from vegetables, meat, fish, poultry, cheese, and potato, namely, hash brown sticks, breaded and battered onion rings and straws, breaded and battered vegetables, battered cheese, cheese sticks, pates and seafood mousses; dips, namely, meat, seafood, and vegetable based dips, dairy based dips, and snack food dips; fruits and vegetables, namely, frozen, chilled, dehydrated, battered and processed fruits and vegetables; frozen prepared meals, namely, frozen or chilled prepared meals containing or consisting primarily of vegetables, meat, poultry, potatoes, eggs, cheese, fish, or seafood; breakfast foods, namely, meat, fish, seafood, poultry, meat extracts, fruits, vegetables, eggs, potato, and cheese based breakfast foods, namely, {applicant must specify the type of foods by their common commercial name consistent with International Class 30, for example, “sausages” or “omelets”}; potato pancakes; hash browns; breakfast patties containing primarily eggs and also containing meat, vegetables or cheese{applicant must clarify as the use of “egg” twice creates confusion}; prepared meals and entrees, namely, prepared meals and entrees based of meat, fish, seafood, poultry, meat extracts, fruits, vegetables, eggs, potato, or cheese; and soups

 

International Class 30—Pizza; snack foods, namely, cereal and rice based snack foods, namely, snack foods containing or consisting of dough, pasta, pastry, pizza, garlic bread and garlic fingers, and dough enrobed snack foods consisting of a dough-based wrapper with pizza filling; appetizers, namely, appetizers having a cereal and rice base, namely, appetizers containing or consisting of dough, pasta, pastry, pizza, garlic bread, and garlic fingers, and dough enrobed appetizers consisting of a dough-based wrapper with pizza fillings; frozen and prepared desserts, namely, bakery goods, bakery desserts, pies, cakes, pastries, french toast, waffles, fruit and ice cream pies, and frozen confections; frozen and prepared pastries; ice cream; frozen prepared meals, namely, meals containing or consisting primarily of pasta, pizza or rice; breakfast foods, namely, French toast, pancakes, waffles, cereals, oatmeal and creamed wheat cereals; prepared sandwiches, namely, filled wraps and bread with filling; prepared meals and entrees, namely, cereal and rice based prepared meals and entrees, namely, entrees containing or consisting of pasta, pizza, rice, sandwiches, and dough enrobed entrees consisting of dough-based wrapper with pizza filling; and powders and mixes used in preparation of non-alcoholic tea beverages, soft drinks and smoothies; taquitos, spring rolls, quesadilla rolls, dumplings, samosas; frozen and prepared non-dairy desserts, namely, desserts made of fruits, frozen fruits, and fruit salad; appetizers made from vegetables, meat, fish, poultry, cheese, and potato, namely, taquitos, spring rolls, quesadilla rolls, dumplings, samosas; sauces used as dips, {reclassified from International Class 29}

 

International Class 31— Fresh potatoes, baby potatoes, and sweet potatoes; chilled fresh potatoes, baby potatoes, and sweet potatoes; and packaged fresh potatoes, baby potatoes, and sweet potatoes {clarified and reclassified from International Class 29}

 

International Class 32— powders and mixes used in preparation of non-alcoholic soft drinks and smoothies {reclassified from International Class 30}

 

International Class 35—Food service services, namely, wholesale distributorship services featuring foods for use in food service channels of trade, namely, services provided to retailers and wholesalers in providing foods for subsequent resale; informational services, namely, providing information in the field of food, healthy eating and nutrition through the use of printed material, electronic, electronic materials or through websites; information services, namely, providing a website featuring information in the field of food, healthy eating and nutrition; vending machine services featuring food; and coupon services and contest services for promoting the goods and services of others

 

International Class 43— Informational services, namely, providing information in the field of food being providing recipes and cooking information {clarified and reclassified from International Class 35} through the use of printed material, electronic, electronic materials or through websites; information services, namely, providing a website featuring information in the field of food being providing recipes and cooking information {clarified and reclassified from International Class 35}

 

International Class 44— Informational services, namely, providing information in the field of healthy eating and nutrition through the use of printed material, electronic, electronic materials or through websites {clarified by deleting “food” and reclassified from International Class 35}; information services, namely, providing a website featuring information in the field of healthy eating and nutrition; vending machine services featuring food {clarified by deleting “food” and reclassified from International Class 35}

 

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 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 International Classes. 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).

 

 

Advisory—Claim of Ownership of Canceled Registration Will Not Be Printed

Applicant’s claim of ownership of U.S. Registration No. 3158142 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled.  Only claims of ownership of active registrations are printed.  See 37 C.F.R. §2.36; TMEP §812.

 

 

 

/Marilyn D. Izzi/

Trademark Examining Attorney

Law Office 112

marilyn.izzi@uspto.gov

P:(571) 270-1523

F:(571) 270-2523

 

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 Trademark Electronic Application System (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 11/22/2013 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.gov.uspto.report/, 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)  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

 

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.