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: 1/20/2015

 

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.

 

NO LIKELIHOOD OF CONFUSION

 

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:

 

1. Requirement that applicant amend the identification of goods
2. Requirement that applicant comply with all multi-class application requirements
3. Requirement that applicant submit a copy of the underlying foreign registration if it wishes to perfect the Section 44 filing basis
4. Information requirement

 

Please see below for details.

 

Please see below for details.

 

REQUIREMENTS

 

REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOODS

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

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

 

The applicant has applied to register the mark for:

 

IC 1:  Modeling materials and compounds for use by children; toys, games and playthings; play sand; sand toys; toy sand sculpting tools; toy sand moulding tools; toy sand boxes; sand box toys; free-flowing play gel; toy gel sold in a container; viscous substances used for amusement; compressible play balls; sports balls; squeeze toys; toy putty; toy putty sculpting tools; toy putty moulding tools; novelty items, namely, a dispenser of stream material; novelty items, namely, a dispenser of foam material; spray can propellants; toy and novelty item in the nature of a dispenser of stream materials and viscous compounds; moulding and sculpting materials and products, namely, granular, mouldable substances that can be moulded, sculpted and formed into any shape; arts and crafts kits; children's multiple activity toys; children's educational toys for developing fine motor skills; toy building sets; educational toys; action skill games; construction toys; water toys; molded plastic toy figurines and action figures

 

Some of the wording used to describe the goods is indefinite and must be clarified because the nature of the goods is unclear.  See TMEP §1402.01.  Also, many of the goods are classified incorrectly and must be reclassified as indicated below or deleted.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).  Finally, some of the wording 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.  For example, “toys” could include computer game programs in International Class 9, or any number of other types of toys in International Class 28.

 

Applicant may adopt the following identification, if accurate:

 

IC 1:  Spray can propellants, namely, gas propellants for aerosol cans

 

IC 9:  Toys, namely, computer game programs

 

IC 16: Modeling materials and compounds for use by children; moulding and sculpting materials and products, namely, granular, mouldable substances similar to clay that can be moulded, sculpted and formed into any shape; [clarify the nature of the “arts and crafts kits, e.g., arts and craft clay kits, arts and craft paint kits, etc.]

 

IC 19:  Play sand

 

IC 28: Toys, namely, [specify, e.g., plush toys], games, namely, [specify, e.g., board games] and playthings, namely, [specify, e.g., toy cars]; sand toys; toy sand sculpting tools, namely, [specify, e.g., toy shovels]; toy sand boxes, namely, [describe, e.g., miniature sand boxes]; toys in the nature of free-flowing play gel, namely, [specify further the nature of the goods]; [clarify the nature of the goods now identified as “toy gel sold in a container”];[clarify the nature of the goods now identified as “viscous substances used for amusement”]; compressible play balls; sports balls; squeeze toys; toy putty; toy putty sculpting tools in the nature of [describe, e.g., toy shovels]; toy putty moulding tools in the nature of [describe, e.g., toy shovels]; novelty items, namely, a [clarify what is meant by “dispenser of stream material”]; novelty items, namely, a [clarify what is meant by “dispenser of foam material”]; toy and novelty item in the nature of a [clarify what is meant by a “dispenser of stream materials and viscous compounds”];children's multiple activity toys; children's educational toys for developing fine motor skills; toy building sets comprised of [specify, e.g., toy building blocks and toy vehicle tracks]; educational toys in the nature of [describe, e.g., in the nature of an illustrated wall map, for teaching math principles to children, namely, manipulative blocks for displaying patterns and groupings, etc.]; action skill games; construction toys; water toys; modeled plastic toy figurines and action figures

 

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.

 

REQUIREMENT THAT APPLICANT COMPLY WITH ALL MULTI-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods 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 that are classified in at least five classes; however, applicant submitted a fee sufficient for only one 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.

 

REQUIREMENT THAT APPLICANT SUBMIT A COPY OF THE UNDERLYING FOREIGN REGISTRATION IF IT WISHES TO PERFECT THE SECTION 44 FILING BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

INFORMATION REQUIREMENT

 

The nature of the goods on which applicant intends to use its mark is not clear from the present record and additional information is required. This requirement pertains especially to applicant’s modeling materials and compounds, toy sand molding and sculpting tools, free-flowing play gel, viscous substances for amusement, etc.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods.  If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in detail the nature, purpose, and channels of trade of the goods.

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814.

 

Also, applicant must specify whether the wording “kinetic” has any significance in the toy/game/plaything/moulding/modeling trade or industry or as applied to the goods 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.

 

GENERAL RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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. §§2.62(c), 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.

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@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 1/20/2015 FOR U.S. APPLICATION SERIAL NO. 86463420

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 1/20/2015, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@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.