To: | Sidecar Doughnuts LLC (efiling@knobbe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86293718 - SIDECAR - SDCAR.003T |
Sent: | 9/16/2014 10:10:30 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86293718
MARK: SIDECAR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sidecar Doughnuts LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 9/16/2014
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On September 16, 2014, the trademark examining attorney and Gregory B. Phillips discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
IDENTIFICATION OF GOODS/SERVICES
Additionally, the wording “toppings” in the identification of goods is unacceptable as indefinite, as indicated below. The term “toppings” could include “fruit toppings,” in International Class 29, as well as “chocolate toppings,” in International Class 30. The applicant must amend the identification to specify the commercial name of the goods and/or the industry or field in which the goods are used, as indicated below in the suggested identification. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 804.04.
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.
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
The applicant may adopt one or more of the following, if accurate:
“Mugs; Cups; Coffee mugs and cups; Canteens; Bottles sold empty,” in International Class 21;
“Fruit toppings; Nut toppings; Peanut butter toppings,” in International Class 29;
“Baked goods, prepared foods, packaged foods and frozen confections, namely, donuts, donut holes, packaged donuts, muffins, instant donut mixes, topping syrup, chocolate toppings, marshmallow toppings, cookies, pastries, cakes, biscuits, croissants, bagels, pies, sandwiches, and ice cream; Beverages, namely, coffee, espresso, cappuccino, tea, hot chocolate, coffee-based beverages; Roasted coffee beans; Coffee beans; Bakery desserts; Dessert puddings,” in International Class 30;
“Soft drinks; Soft drinks, namely, sodas; Fruit-based beverages,” in International Class 32; and/or
“Restaurant services; Coffee shop services; Catering services,” in International Class 43.
MULTIPLE – CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FAILURE TO RESPOND
/Alec Powers/
Trademark Examining Attorney
Trademark Law Office 101
Direct: 571-272-9309
E-mail: alexander.powers@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.