To: | Sunrise Markets Inc. (ann@carlseniplaw.ca) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86329321 - SUNRISE - N/A |
Sent: | 10/21/2014 6:29:32 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86329321
MARK: SUNRISE
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CORRESPONDENT ADDRESS: ANN CARLSEN; ANN CARLSEN & COMPANY |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sunrise Markets Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 10/21/2014
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 THE OFFICE'S DATABASE OF TRADEMARKS
This Office action raises the following:
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
The following requirements are issues to which applicant must respond timely and completely.
The identification of goods currently contains ambiguous wording and wording that refers to goods that are appropriately classified in a class other than the one applied-for.
Specifically, the following wording is indefinite and, therefore, unacceptable. See TMEP §1402.01.
- "soya burgers": applicant must specify what it means by "burgers" (e.g., "soy burger patties" in Class 29 or "soy burger sandwiches" in Class 30).
- "entrees made primarily of tofu": applicant must specify whether the entrees are frozen, prepared or packaged (e.g., "frozen soy-based entrees", "prepared soy-based entrees", "packaged soy-based entrees").
- "non-alcoholic beverages namely soya based beverages": applicant must specify whether or not the beverages are milk substitutes (e.g., "soy-based beverages not being milk substitutes" in Class 32, or "soy-based food beverage used as a milk substitute" in Class 29).
- "tofu and soya desserts": this wording appears to refer to goods that are in International Class 30, which includes mainly foodstuffs of plant origin. Further, the nature of the desserts and/or the specific food item should be specified in the identification (e.g., "Annin tofu", "tofu and soya desserts, namely, {specify food item, e.g., bakery desserts, cookies, pudding}").
- "frozen desserts made primarily of tofu and soya": this wording appears to refer to goods that are in International Class 30 (e.g., "frozen soy-based desserts").
Applicant may adopt the following identification of goods, if accurate:
(Modifications in bold.)
Class 29: Food products, namely tofu, soy-flavoured smoked and baked tofu, tofu puffs, tofu patties, soy burger patties, egg tofu and flavoured egg tofu, {please specify: "frozen", "prepared", "packaged"} entrees made primarily of tofu, soy or tofu based meat substitutes, prepared entrees made primarily of tofu in a marinated sauce, tofu or soy based yogurt; soya milk; non-alcoholic beverages, namely, soy-based food beverages used as a milk substitute
Class 30: soy burger sandwiches; tofu and soy desserts, namely, {specify food item, e.g., "bakery desserts", "cookies", "pudding"}; frozen desserts made primarily of tofu and soy
Class 32: soy-based beverages not being milk substitutes
SCOPE ADVISORY
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.
The application identifies goods in more than one international class; as such, it appears that applicant intends to register the same mark for goods in multiple classes, which is called a "multiple-class application". If applicant chooses to proceed with the multiple class application, then applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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 Sections 1(b) and 44 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.
The filing fees for adding classes to an application are as follows:
(1) A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).
(2) A $375 fee per class, when the fees are submitted with a paper response.
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the design of a sunrise on an oval shape, placed above two Chinese characters and the wording "SUNRISE".
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).
IN CLOSING: RESPONSE GUIDELINES
/Loksye Lee Riso/
Examining Attorney
Law Office 101
(571) 272-2448
loksye.leeriso@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.