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: 3/24/2014

 

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).

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification of goods/services
• Significance inquiry

 

INFORMALITIES

The applicant must respond to the following informalities.

 

IDENTIFICATION/CLASSIFICATION OF GOODS/SERVICES

The identification/classification of goods/services is indefinite and must be clarified because the nature of the goods/services cannot be ascertained and accurately classified.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

           

“Electronic cigarettes kits comprising primarily cartridges sold filled with propylene glycol for electronic cigarettes, chemical flavorings in liquid form used to refill electronic cigarette cartridges, batteries, and battery chargers.”

            International Class 1.

 

“Cases specially adapted for carrying electronic devices for charging electronic cigarettes and electronic cigarette batteries, all for use by cigarette and tobacco smokers; Cases for battery chargers for electronic cigarettes; Electronic cigarette batteries; Electric cigarette batteries; Electric cigarette wall chargers; Electronic cigar batteries; Electronic cigarette battery chargers; Electric cigarette USB chargers; Electronic cigarette charging cords; Electric cigarette {clarify “pass-through USB chargers” by their common commercial name}; Electric cigarette adapters allowing USB chargers to plug into a standard wall outlet; Electronic cigar battery chargers; Electronic devices and appliances for charging and carrying electronic cigarettes and electronic cigarette batteries, all for cigarette and tobacco smokers, namely, charger cases, USB chargers, wall plug adaptors and car chargers; Portable charging cases specially adapted for use with electronic cigarettes, namely, battery chargers for electronic cigarettes sold with cases; Electronic cigarette kits comprising electronic cigarette batteries, portable charging cases specially adapted for use with electronic cigarettes, wall charging adapters, USB cables for charging the portable charging cases, USB battery chargers for charging electronic cigarette batteries, atomizers for household use, refill cartridges sold filled with propylene glycol for electronic cigarettes, and electronic cigarette refill liquid, namely, propylene glycol for electronic cigarettes; Electronic cigarette kits comprising electronic cigarette batteries, {clarify “tanks for electronic cigarettes”}, USB charging cord, and replacement coils; Electronic cigarette kits comprising electronic cigarette batteries, USB charging cable and {clarify tanks for electronic cigarettes}; Electronic cigarettes kits comprising batteries, battery chargers, cartridges sold filled with propylene glycol for electronic cigarettes, and chemical flavorings in liquid form used to refill electronic cigarette cartridges.”

            International Class 9.

 

Electronic cigarettes kits comprising primarily chemical flavorings in liquid form used to refill electronic cigarette cartridges, cartridges sold filled with propylene glycol for electronic cigarettes, batteries, and battery chargers.”

            International Class 30.

 

“Adjustable voltage electronic cigarettes; Atomizers and cartomizers namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes and electronic smoking devices; Automatic electric cigarettes; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Cases specially adapted for electrical and electronic cigarettes, cigars, and smoking pipes; Disposable electronic cigars; Disposable electronic cigarettes; Electronic cigarette cases; Electronic cigar cases; Electronic cigarette holders and lanyards; Electric cigarettes; Electric cigars; Electronic cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes; Electronic cigarette refill cartridges sold empty; Electronic cigarette lighters; Electric cigarette springs sold as a component of electronic cigarettes; Electric cigarette heating plates sold as a component of electronic cigarettes; Electric cigarette drip tips sold as a component of electronic cigarettes; Electric cigarette mouthpieces sold as a component of electronic cigarettes; Electric cigarette tinctures sold as a component of electronic cigarettes; Electric cigarette herbal preparations for smoking, not for medical use; Electric cigarette plant concentrates for smoking, not for medical use; Electronic cigarette replacement parts; Electronic cigarette herbal vaporizer pipe; Electronic cigarette vaporizer herb dish; Electric cigarette tools for loading electric cigarettes with vaporizable product, namely, {specify tools by their common commercial name, e.g. tampers}; Electronic cigarette drip bottle; Electronic cigars; Electronic smoking pipes; Electronic hookahs; Electronic nicotine inhalator; Electric cigarette components, namely, clearomizers, drip shield, drip tips, filter tips, and heating coils sold as a component of electronic cigarettes, cigarette {clarify “mods” by its common commercial name},  refill tanks, and wicks; Portable rechargeable electric vaporizers; Rechargeable electronic cigarettes; Rechargeable electronic cigars; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokeless vaporizer pipes; Component parts for electronic cigarettes, namely, atomizers, cartomizers, cartomizers namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes, drip tips and electronic cigarette refill cartridges sold empty, and cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes all sold as a unit; Empty refill cartridges being component parts of electronic cigarettes; Electronic cigarette kits comprised of electronic cigarettes and carrying cases; Electronic cigarette starter kits comprising electronic cigarettes, refill cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes, heating elements with cartomizers and plastic drip tips,  refill electronic cigarette liquid comprised of vegetable glycerin, electronic cigarette batteries, wall charging adapters, and USB cables.”

            International Class 34.

 

Please note that the following accessories were misclassified:  accessories consisting of  liquids, cartridges, atomizers, batteries, tanks, mods, USB and wall chargers, e-pipes, e-cigars, drip tips.”  The wording was intentionally deleted as the goods were already included in the properly classified identifications.

 

Retail store services featuring smoking and vaping simulators and accessories, namely, atomizers, battery mod systems, batteries, cartridges, cartridges sold filled with propylene glycol and vegetable glycerin for electronic cigarettes, cartomizers, chemical flavorings in liquid form used to refill electronic cigarette cartridges, drip tips, electronic cigarettes, electronic cigarette parts and accessories, electronic cigarette holders or lanyards, electronic cigarette tanks, personal vaporizers, and electronic smoking pipes, electronic nicotine inhalators, electronic smoking devices and parts, electronic pens, electronic cigarette liquids, e-liquids, e-juice, smoke juice, electronic cigars, electronic cigarette tanks, electronic pipes, electronic cigarette cartridges, electronic cigarette rechargeable batteries, electronic cigarette disposables, electronic cigarette car chargers, electronic cigarette USB chargers, electronic cigarette wall chargers, electronic cigarette cartomizers, electronic cigarette mod systems, electronic pipes, electronic vaporizers, electronic hookahs, mods, tanks, USB and wall chargers, vaporizers, electronic cigarette starter kits, electronic cigarette kits comprising e-liquids, e-cigarette mods, atomizers, cartomizers, passthroughs, drip tips and cartridges; Online retail store services featuring smoking and vaping simulators and accessories, namely, atomizers, battery mod systems, batteries, cartridges, cartridges sold filled with propylene glycol and vegetable glycerin for electronic cigarettes, cartomizers, chemical flavorings in liquid form used to refill electronic cigarette cartridges, clothing, drip tips, electronic cigarettes, electronic cigarette parts and accessories, electronic cigarette holders or lanyards, electronic cigarette tanks, personal vaporizers, and electronic smoking pipes, electronic nicotine inhalators, electronic smoking devices and parts, electronic pens, electronic cigarette liquids, e-liquids, e-juice, smoke juice, electronic cigars, electronic cigarette tanks, electronic pipes, electronic cigarette cartridges, electronic cigarette rechargeable batteries, electronic cigarette disposables, electronic cigarette car chargers, electronic cigarette USB chargers, electronic cigarette wall chargers, electronic cigarette cartomizers, electronic cigarette mod systems, electronic pipes, electronic vaporizers, electronic hookahs, mods, tanks, USB and wall chargers, vaporizers, electronic cigarette starter kits, electronic cigarette kits comprising e-liquids, e-cigarette mods, atomizers, cartomizers, passthroughs, drip tips and cartridges; Retail store services featuring clothing; Online retail store services featuring clothing; Retail outlets featuring rechargeable e-cigarettes; Wholesale distributorships featuring electronic cigarette e-liquid; Retail store services featuring e-liquid  for filling cartridges, cartomizers, and e-liquid sold in bulk.”

            International Class 35.

 

The word “sales” 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 delete “sale(s)” and indicate with greater specificity the nature of the service, e.g., “retail store services featuring e-liquid,” “mail order services featuring e-liquid,” or “on-line retail store services featuring e-liquid.”

 

The word “distribution” in the identification of services for International Class 35 must be clarified because it is too broad and could identify services in more than one international class.  See TMEP §§1402.01, 1402.03.  Generally, the word “distribution” refers to delivery-type transportation services in International Class 39 rather than retail-related services in International Class 35.  See TMEP §§1401.02(a), 1402.01, 1402.03. 

 

If applicant is engaged in retail-related services, the word “distribution” should be amended to “distributorship services in the field of [indicate the specific field, e.g., clothing, cosmetics, auto parts, etc.]” or “wholesale distributorships featuring [indicate the specific field, e.g., clothing, cosmetics, auto parts, etc.]” in International Class 35, if accurate.  However, if applicant is engaged in delivery-type transportation services, the word “distribution” should be amended to “distribution services, namely, delivery of [indicate the specific field or type of goods, e.g., clothing, cosmetics, auto parts, etc.]” in International Class 39, if accurate.

 

“Bottling services featuring electronic cigarette e-liquid.”

            International Class 39.

 

Manufacture of electronic cigarette e-liquid to order and/or specification of others;

            International Class 40.

 

“Entertainment services, namely, tastings of electronic cigarettes at retail outlets where users plug in their own mouthpiece and sample different rechargeable e-cigs having different flavors of vapor.”

            International Class 41.

 

Please note that kits consist of a group of items that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  The type of kits and the principal components will determine classification.  See id.  Therefore, applicant must amend the identification to classify more accurately the kits based on the principal components.  See id.

 

For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first.  Generally, the international class of the kit will be determined by the international class of the majority of items in the kit.  For example, “nail care kits comprising nail polish, emery boards, cotton balls for cosmetic purposes and nail clippers” are in International Class 3 because this is the international class of a majority of the items (with the only item not in International Class 3 being “nail clippers,” which is in International Class 8).

 

If no items in a shared-theme kit are more dominant than any other item, the international class for the kit itself will be determined by the first-listed item after the wording “comprising.”  For example, “baking kits comprising baking pan and cake mix” are in International Class 21 (the class for “baking pans”), and “baking kits comprising cake mix and baking pan” are in International Class 30 (the class for “cake mixes”).

 

The original identifications of goods for Classes 1, 11, and 30  are acceptable.  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.  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.

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

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 use in commerce:

 

(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 6 fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)       DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)       SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)       STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class(es) 1, 11 30 and 35  only.  Applicant must submit additional specimens if different international classes are added 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):

 

(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 6 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).

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant must specify whether the wording “AVAIL” has any significance in the applicant’s trade or industry or as applied to the goods and/or services described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

PLEASE NOTE:  Applicant is encouraged to telephone or email (Tracy.Cross@uspto.gov) the trademark examining attorney to resolve the issues raised above, if a new class is not being added.  Formal responses are not accepted via email.  However, in this case, the examining attorney will issue an examiner’s amendment based upon the applicant’s informal email communication.

 

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.

 

 

 

 

 

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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 3/24/2014 FOR U.S. APPLICATION SERIAL NO. 86135066

 

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 3/24/2014 (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.