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: 12/10/2014

 

 

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).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

CLASS 008

 

The identification of goods is indefinite and must be clarified. Many of the goods contain parenthetical information. The parentheses must be removed and the information within them incorporated into the identification. The goods listed as “Shells Wine” must be clarified by their common commercial name. No suggestion is offered for these goods. Fruit and vegetable knives, cheese slicers, and tableware appear to be duplicated. The second instance of each has been deleted.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  

 

• “Spoons; flatware, namely, Spoons, forks, skimmers, ladles for wine; Cutters for {indicate use, e.g., cake, French fries}; Pizza cutters; Cutlery; Cutlery products, namely, {specify type, e.g., forks, spoons, and knives}; Cleavers; non-electric fruit and vegetable Peelers; Knives; fruit and vegetable knives; Knives for flaking; Knives for chopping fruits and vegetables; Non-electric vegetable slicer; Egg Slicers; Cheese slicers; Forks; Ice punches, namely, hammers; Tableware , namely, knives, forks and spoons; hand operated vegetable chopper”, in Class 008

 

• “Household utensils, namely, skimmers”, in Class 021

 

CLASS 021

 

The identification of goods is indefinite and must be clarified. Many of the goods contain parenthetical information. The parentheses must be removed and the information within them incorporated into the identification. Some of the parenthetical information is unclear and the applicant must clarify what exactly is meant by goods such as “Office ( Bottles - )”, “Glass ( inners - )”, “Bottles ( non- electric space heaters - )”, “Cooling ( Bottles for - )”, “Soup ( for Shells - )” , “for use in the kitchen”. The examining attorney offers no suggestions below for these goods. The following goods are also unclear and the examining attorney has no suggestions for the following: “Beater cocktail”, “Canteen pocket”, “For drinking cups”, “Cutters mass”, “In bowl ice”, “Juice of fruits than electric , domestic”, “For kitchen utensils”, “Olive ginner”. See TMEP §1402.01.  Please note that any amendment to these goods cannot broaden the scope of the original wording.

 

The wording “Thermoses” in the identification of goods is the plural form of a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 0067002.  An applicant may not use a registered mark owned by another party in the identification.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of goods to delete the wording “Thermoses” and substitute the common commercial or generic name of the goods, e.g., “Thermal insulated containers for food or beverages”.

 

Finally, “ice buckets” and “glass stoppers” appear twice. The second instance has been deleted.

 

Applicant may adopt the following identification, if accurate: 

 

• “electric dough mixer for home use”, in Class 007

 

• “water bottle holders for bicycles”, in Class 012

 

• “bottle openers, electric and nonelectric; household utensils, namely, non-electric kneader; non-electric dough mixer for home use; Glass ampoules for medication sold empty; ice buckets; manual milk churns; isothermal insulated bags for food or beverages; Teapot; Non electric coffee makers; portable cooling boxes, non-electric; Mug; Jugs; Beer mugs; Tea infusers; Kettles; dampers for use with Kettles; Non-electric kettles; Sieve, except paper; Strainers for household purposes; Strainers tea; Strainers for use with non-electric coffee makers; cooking spoons, serving forks, skimmers, and ladles, not for use as cutlery; Spoons for mixing; kitchen and serving ladle; Ladle for soup, for use in the kitchen; cocktail Shakers; Ice cube molds;; Vegetable peeler; Juice of garlic; Skimmer or Skimmer; Bottles; Bottles for sports drinks; Water Bottles; Bottles for freezing; thermal insulated containers for food or beverages; Portable coolers, non-electric; Ice molds for household use; Graters for Kitchen use; pot and pan Scraper; Glass Containers for household use; Containers for kitchen use; Containers for household or kitchen use; Thermal food containers; Thermal containers for beverages; Glass Stoppers; Corkscrew, electric and non-electric; Bottle Holder, namely, insulating sleeve holder for bottles; Thermal Containers for food or beverages; Household utensils, namely, {indicate common commercial names of the goods}; Non-electrical utensils for cooking, namely, {indicate common commercial names of the goods}; beverage glassware”, in Class 021

 

• “garlic juice”, in Class 032

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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.

 

POSSIBLE ADDITIONAL FEES REQUIRED FOR 1(A) GOODS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

 

(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 a fee(s) sufficient for only 2 class(es).  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.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 021 and applicant needs a specimen for any other class.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “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.” 

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) 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.

 

 

 

 

/Ernest Shosho/

Attorney

Law Office 119

U.S. Patent & Trademark Office

571-272-9705

ernest.shosho@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 12/10/2014 FOR U.S. APPLICATION SERIAL NO. 86378824

 

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 12/10/2014 (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.