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: 6/5/2015

 

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.

 

This application was filed with the USPTO on March 3, 2015.

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification and classification of goods
• Request for information regarding the goods

 

Search Results

 

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

 

The identification of goods is indefinite and must be clarified for the following reasons:

 

• Class 003:  The wording “Beauty care products; beauty care products in the form of liquids, powders, or capsules” must be specified as to the type of products.  The word “products” in the identification of goods is indefinite and must be clarified because it is too broad and could refer to goods in multiple international classes.  Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item.  See TMEP §§1402.01, 1402.03. 
• Class 005:  The wording “health foods” must be clarified as to the nature of the goods and amended accordingly so that it belongs in Class 005.  The wording “health ingredients” is unclear as to the nature of the goods and must be further specified.  The wording “dietary fiber” must be specified as to the purpose of the goods.  The wording “meal replacement powder supplements” must be clarified that they are nutritional in nature and that they are for medical purposes.  The wording “meal replacement shake powders” must be specified as to their purpose.  The wording “protein-based drink mixes” must be specified as to their purpose.  The wording “weight gain supplements” must be specified as to their form.  The wording “super food nutritional supplements, namely, fruits, vegetables, herbs, and nuts” should be amended to “super food nutritional supplements comprising fruits, vegetables, herbs, and nuts” for clarity.  The wording “protein powder nutritional supplements” is duplicated and must be deleted.  The wording “liquid drink mixes; powdered drink mixes” must be specified as to the type of drinks and classified accordingly.  The wording “powder or liquid energy supplements for drink mixes” appear to be misclassified and the wording “supplements” renders the wording ambiguous.  The wording “peanut butter powder” is misclassified.  The wording “meal replacement bars” must be specified that they are nutritional in nature and for medical purposes to be classified in Class 005.  Otherwise, they need to be further specified as to the primary component and classified accordingly. 
• Class 029:  The wording “nuts” must be specified as to whether they are process or fresh and classified accordingly.  The wording “trail mix consisting primarily of at least one of nuts, seeds, fruits, and optionally including chocolate” must be specified that the fruits are dried fruits.
• Class 030:  The wording “health foods” must be clarified as to the nature of the goods and amended accordingly so that it belongs in Class 030.  The wording “syrup; syrup powders” must be specified as to the type of syrup.  The wording “gluten-free food and supplement products” must be further specified as to the type of food and if for medical purposes, must be reclassified in Class 005. 

 

See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:   

 

Class 003:  Beauty care products, namely, {specify type of goods, e.g., beauty creams, beauty gels, beauty soaps, cosmetics}; beauty care products in the form of liquids, namely, {specify type of goods, e.g., anti-aging toner, skin bronzer, liquid soaps}; beauty care products in the form of powders, namely, {specify type of goods, e.g., body powder, face powder, make-up powder, pressed face powder}; beauty care products in the form of capsules, namely, {specify type of goods, e.g., cosmetic oils, facial lotions, moisturizing milk} encapsulated in capsules

 

Class 005:  Dietary and nutritional supplements; [Explain “health foods”]; health ingredients, namely, {specify goods in Class 005}; dietary fiber for {specify purpose, e.g., treating constipation, use as an ingredient in the manufacture of dietary supplements, to aid digestion}; dietary fiber for use as an ingredient in beverages, foods, nutritional supplements; fiber and fiber-based nutritional supplements; nutritional meal replacement powder supplements for medical purposes; meal replacement shake powders for weight gain; protein powder nutritional supplements; nutritional supplement in the nature of protein-based drink mixes; weight gain supplements in the form of protein supplement shakes; weight gain powder or liquids for drink mixes; weight loss supplements; weight loss powder or liquids for drink mixes; super food nutritional supplements comprising fruits, vegetables, herbs, and nuts; [Delete “protein powder nutritional supplements;” because duplicated] liquid drink mixes for dietary supplements; powdered drink mixes for dietary supplements; enzyme dietary and food supplements; pre-workout nutritional supplements; recovery meal replacement shake powder; amino acids for nutritional purposes; nutritional meal replacement bars for {specify use, e.g., medical purposes, boosting energy}; nutritional supplement energy bars; bone and joint dietary and nutritional supplements in the form of liquids, powders, or capsules; nutritional supplements in the form of powders, liquids or capsules; dietary and nutritional supplements for boosting energy; energy powder supplements; dietary and nutritional supplements for promoting organ support; gluten-free food and supplement products, namely, {specify type of foods, e.g., pasta, crackers, etc.} for the treatment of special medical and health conditions; digestive enzyme blend for breaking down peptides for use as a component of dietary supplements for human consumption; powdered amino acid blend nutritional supplement drink mix

 

Class 029:  Processed nuts; freeze dried vegetables; freeze dried fruits; coconut oil; trail mix consisting primarily of at least one of nuts, seeds, dried fruits, and optionally including chocolate; fruit-based meal replacement bars; peanut butter powder

 

Class 030:  [Explain “Health foods”]; natural sweetener; natural sweetener for us as an ingredient in beverages, foods, nutritional supplements; baking mixes, namely, pancake mixes, brownie mixes, cookie mixes, muffin mixes, cake mixes, biscuit mixes; syrup, namely, {specify type of syrup, e.g., corn syrup, golden syrup, maple syrup, pancake syrup}; powders for making {specify type, e.g., corn, golden, maple, pancake} syrup; breakfast cereals; chocolate; chocolate bars; gluten-free food products, namely, {specify type of food products, e.g., bread, pasta, ice cream cookies}; liquid drink mixes used in the preparation of {specify type of beverage, e.g., tea based beverages}; powdered drink mixes used in the preparation of {specify type of beverage, e.g., tea based beverages}; chocolate-based meal replacement bars; high-protein cereal bars

 

Class 031:  Fresh nuts

 

Class 032:  Liquids, concentrates, or powders for use in preparing energy drinks; liquid drink mixes used in the preparation of {specify type of beverage, e.g., non-alcoholic cocktails, soft drinks}; powdered drink mixes used in the preparation of {specify type of beverage, e.g., non-alcoholic cocktails, soft drinks}; powder or liquid energy supplements mixes for preparing energy drinks

 

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.

 

Multiple Class Application Requirements

 

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 Trademark Act Section 1(b):

 

(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 that are classified in at least 6 classes; however, applicant submitted fees sufficient for only 5 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.

 

Fees for Adding Classes

 

The fees for adding classes to an application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission.  See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

Request for Information

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); 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); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.  The response must include the following information:  Does the wording SILVER FERN have any significance in the cosmetic, nutritional supplement, and food industry?;  Do any of applicant’s goods contain SILVER FERN?

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

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.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

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.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Janet H. Lee/

Examining Attorney

Law Office 102

Phone: (571) 272-1053

 

janet.lee@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 6/5/2015 FOR U.S. APPLICATION SERIAL NO. 86551841

 

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 6/5/2015 (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.