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: 11/21/2013

 

 

 

 

 

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

 

 

 

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’s Database of Marks

 

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).

 

Identification of Goods

 

The wording “Albums for art, entertainment, decor, history, people, places, fashion; Glitter; Temporary tattoos” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, art, entertainment, decor, history, people, places encompasses albums for items in various classes such as record albums in Class 9 and applicant must specify the album with greater detail.  The term “glitter” encompasses decorative glitter in Class 20, face glitter in Class 3 and glitter pens for stationery purposes in Class 16.  Finally, “temporary tattoos” encompasses temporary tattoo transfers for use as cosmetics in Class 3,  and Temporary tattoo transfers in Class 16.

 

Further, the identification of goods includes a duplicate entry of the wording “Stencil paper.”  Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §707.02.  However, if applicant modifies the goods, applicant may do so only to clarify or limit them; 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 et seq.

 

Applicant may substitute the following wording, if accurate: 

 

 

CLASS 016

Art made of paper; 3D decals for use on any surface; A series of books and written articles in the field of art, entertainment, decor, history, people, places, fashion; Address books; Address books and diaries; Address labels; Address plates; Address stamps; Addressing machines; Adhesive labels; Adhesive materials for office use; Adhesive notepads; Adhesive tape dispensers for household or stationery use; Adhesives for stationery or household purposes; Agendas; Airbrush make-up stencils; Albums for stickers; Albums for {identify particular goods contained in the album, e.g., photos featuring art, entertainment, decor, history, people, places and fashion}; Announcement cards; Appointment books; Art and photograph portfolio cases; Art etchings; Art paper; Art pictures; Art prints; Art prints on canvas; Artists' brushes; Artists' pastels; Artists' pencils; Artists' pens; Artists' watercolor saucers; Arts and craft clay kits; Atlases; Autograph books; Baby books; Bags for microwave cooking; Ballpoint pens; Bathroom tissue; Binder clips; Binders; Birthday books; Blackboard erasers; Blackboards; Blank cards; Blank journals; Blank note cards; Blank paper notebooks; Blank writing journals; Blotters; Blotting paper; Book covers; Book holders; Book marks; Book-cover paper; Bookends; Books in the field of art, entertainment, decor, history, people, places, fashion; Bottle wrappers of cardboard or paper; Boxes of cardboard or paper; Boxes, cartons, storage containers, and packaging containers made of paper or cardboard; Brag books; Bubble pens; Bumper stickers; Calendar desk pads; Calendar refills; Calendars; Calendars and diaries; Calligraphy ink; Calligraphy paper; Canvas for painting; Canvas for printing; Canvas panels for artists; Card files; Cardboard boxes; Cardboard containers; Cardboard hang tags; Cards bearing universal greetings; Caricatures; Carrying cases made of paper; Cartoon prints; Cartoon strips; Cases specially adapted for holding and carrying books; Cat box liners in the form of plastic bags; Chalk; Chalk and chalkboards; Chalk boards for school and home use; Chalk sticks; Charcoal pencils; Charts for displaying data about human height; Checkbook and passbook wallets; Checkbook covers; Children's activity books; Children's books; Children's interactive educational books; Children's storybooks; Children's wall stickers and murals; Children's arts and crafts paper kits; Children's books and Christmas tree ornaments sold as a unit; Christmas cards; Clip boards; Coasters of paper; Coffee table books featuring art, entertainment, decor, history, people, places, fashion; Color pencils; Color prints; Colored craft and art sand; Coloring books; Comic books; Comics; Construction paper; Cook books; Cookbook holders; Corkboard pins; Correspondence cards; Correspondence holders; Cosmetic pencil sharpeners; Coupon books; Covers of paper for flower pots; Craft glue for stationery or household purposes; Craft paper; Crayons; Crepe paper; Crossword puzzles; Day planners; Decals; Decorations for pencils; Decorative stickers for helmets; Decorators' paintbrushes; Desk baskets for desk accessories; Desk blotters; Desk calendars; Desk file trays; Desk pads; Desk sets; Desktop stationery cabinets; Diaries; Disposable napkins; Document covers; Document file racks; Document file trays; Drawing ink; Drawing instruments; Drawing pads; Drawing paper; Drawing pencils; Drawings; Driver's license holders; Dry erase markers; Dry erase writing boards and writing surfaces; Easel pads; Easels; Electric pencil sharpeners; Electric staplers for offices; Electronic typewriters; Engagement books; Envelopes; Eraser dusting brushes; Erasers; Event albums; Exercise books; Eyebrow stencils; Fabric gift bags; Face towels of paper; Facial tissue; Felt pens; Felt tip markers; Felt writing pens; Figures made of paper; File cards; File folders; File trays; Filler paper; Fingerprint kits; Flash cards; Flip books; Flip chart cases; Folders; Fountain pen ink cartridges; Fountain pens; Framed and matted art pictures featuring calligraphy, pressed flowers and/or images of pressed flowers; Framed art etchings; Framed art pictures; Framed art prints; Framed graphic art reproductions; Framed paintings; General feature magazines; Geographical maps; Gift bags; Glitter, namely, {identify types of glitter, e.g. Glitter pens for stationery purposes}; Gift boxes; Gift wrapping paper; Glitter glue for stationery purposes; Globes; Glue for stationery or household purposes; Graph paper; Graphic art prints; Graphic art reproductions; Graphic fine art prints; Graphic novels; Graphic prints and representations; Greeting cards; Greetings cards and postcards; Guest books; Halloween goodie bags of paper or plastic; Hand-held labeling devices; Hat boxes of cardboard; Highlighter pens; Highlighting markers; Holders for adhesive tapes; Holders for desk accessories; Holiday cards; Index cards; Ink pens; Ink stamps; Inkwells; Japanese ceremonial paper strings (mizuhiki); Japanese handicraft paper; Japanese paper; Lap boards for reading and writing; Lap desks; Leather appointment book covers; Leather book covers; Letter openers; Lunch bags; Maps; Memory books; Modeling clay; Modeling paste; Molds for modeling clays; Money clips; Mounted and unmounted photographs; Mounted posters; Mounts for stamps; Murals; Non-fiction books on a variety of topics; Note books; Note cards; Note paper; Notebook dividers; Notebook paper; Notebooks; Notepads; Novels; Office hole punchers; Office labeling machines; Paint rollers; Paint stirrers; Paint trays; Paintbrushes; Paintings; Paintings and calligraphic works; Paintings and their reproductions; Paintings in mixed media; Palettes for painting; Paper; Paper baby bibs; Paper bags; Paper bows for gift wrap; Paper cake decorations; Paper clip holders; Paper clips; Paper cocktail umbrellas; Paper cutters; Paper display boxes; Paper doilies; Paper filters for coffee makers; Paper folders; Paper for Japanese sliding screens (shoji-gami); Paper gift bags; Paper gift bags for wine; Paper gift tags; Paper gift wrap; Paper hang tags; Paper mache; Paper mache figurines; Paper mats; Paper party decorations; Paper party favors; Paper stationery; Paper stock; Paper table cloths; Paper tissues for cosmetic use; Paper towels; Paperweights; Parchment paper; Party ornaments of paper; Passport cases; Passport covers; Passport holders; Pastel crayons; Pastels; Pen and pencil cases; Pen and pencil holders; Pen and pencil trays; Pen clips; Pen holders; Pencil boxes; Pencil cases; Pencil or pen boxes; Pencil sharpeners; Pencil sharpening machines; Pencils; Pens; Photo storage boxes; Photograph corners; Photograph mounts; Photograph stands; Photographic albums; Pictures; Plastic gift wrap; Portable desks; Postcards; Poster board; Posters; Presentation folders; Print engravings; Printed calendars; Prints; Push pins; Rice paper; Rubber stamps; Scented drawer liners; Scrapbook albums; Scrapbook pages; Sealing stamps; Sealing wax; Seals; Sketch books; Sketch pads; Sketches; Stamp cases; Stamp inks; Stamp pad inks; Staple removers; Stapler holders; Staples; Stationery; Stationery boxes; Stationery cases; Stationery folders; Stencil cases; Stencil paper; Stencil paper; Stencil plates [DELETE AS DUPLICATE]; Stenciling machines; Stencils; Stencils for decorating; Stickers; Tarot cards; Temporary tattoo transfers; Textile wine gift bags; Thumbtacks; Tissue paper; Toilet paper; Toilet tissue; Tracing paper; Unmounted posters; Wall calendars; Wedding albums; Wedding books; Works of art made of paper; Wrapping paper; Writing journal sheets; Writing paper; Xuan paper for Chinese painting and calligraphy

 

An applicant may amend an identification of goods 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 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. 

 

Multiple Class 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):

 

(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).

 

 

 

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.

 

 

 

 

/Heather Biddulph/

Heather Biddulph

Law Office 104

email: heather.biddulph@uspto.gov

phone: 571-272-8190

 

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 11/21/2013 FOR U.S. APPLICATION SERIAL NO. 86029286

 

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 11/21/2013 (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.