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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 3/29/2017

 

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.

 

Summary of Issues: 

 

• Identification of Goods and Services – Clarification Required
• Requirements for Combined Application – Advisory

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

Search Results: 

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Informal Issues:

 

Identification of Goods and Services – Clarification Required:

 

The wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses. 

 

For example, “animated cartoons” can encompass “animated cartoons recorded on magnetic data carriers” in Class 09 and also “Provision of non-downloadable animated cartoons via a video-on-demand service” in Class 41.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “blenders for food preparation” in the identification of goods is indefinite and misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  “Electric food blenders” are in Class 07 and “Non-electric food blenders” are in Class 21.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant has classified “safety gates of metal for babies and children” in International Class 20; however, the proper classification is International Class 06.  Therefore, applicant may respond by (1) adding International Class 06 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “safety gates of metal for babies and children” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

For example, the identification for “retail services” in International Class 35 is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  Retail services could include a wide array of retail support services – from accounting to advertising and marketing services. 

 

If applicant’s retail services involve retail sales, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail store services featuring baby items,” “retail distributorships in the field of baby items,” and “retail outlets featuring baby items.”  See TMEP §§1301.01(a)(ii), 1402.11.

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 06:         “Safety gates of metal for babies and children”

 

Class 07:         “Electric food blenders”

 

Class 09:         “animated cartoons recorded on magnetic data carriers; apparatus and instruments for music reproduction, namely, MP3 players, CD players, radio receivers and monitors for reproduction of sound; apparatus and instruments for storing sound and images, namely, [applicant must further specify goods by common commercial name, e.g., memory cards]; apparatus and instruments for transmitting data; apparatus for electronic recording of sound; apparatus for the transmission of sound; baby and children monitors; computer controlled sound apparatus, namely, digital audio players and recorders, CD players and recorders; computer game software; downloadable computer software applications for [applicant must specify function of software, e.g., games]; computer software programs for transmitting computer sounds; musical instrument adapters, namely, sound adapters for use with music players; picture projectors; software programs used to compose for computer generated music; sound processing units, namely, electronic sound processing apparatus; thermometers and electronic thermometers, other than for medical purposes; walky-talkies”

 

Class 10:         “babies' bottles; babies' feeding bottles; babies' pacifiers; baby soothers; feeding bottles; holding apparatus for feeding bottles; infants' feeding bottles; teethers; Teething rings featuring baby rattles; teething rings incorporating baby rattles; teething rings”

 

Class 11:         “apparatus for freezing, namely, [applicant must further specify goods by common commercial name, e.g., freezers]; apparatus for preparation of beverages, namely, [applicant must further specify goods by common commercial name, e.g., electric beverage warmers]; apparatus for refrigerating, namely, [applicant must further specify goods by common commercial name, e.g., refrigerators]; beverage cooling apparatus; blenders for food preparation; installations, apparatus and instruments for lighting, namely, [applicant must further specify goods by common commercial name, e.g., light bulbs]; lamps; light-emitting diodes (LED) lighting apparatus, namely, [applicant must further specify goods by common commercial name, e.g., LED lighting fixtures]; lighting apparatus, namely, [applicant must further specify goods by common commercial name, e.g., light bulbs]; lights, namely, [applicant must further specify goods by common commercial name, e.g., light bulbs]; refrigerating containers, namely, [applicant must further specify goods by common commercial name, e.g., refrigerated shipping containers]”

 

Class 18:         “baby carriers worn on the body; back packs for carrying babies; back packs for toddlers or young children; bags for carrying babies accessories; bags, namely, [applicant must further specify goods by common commercial name, e.g., duffle bags]; covers for infant carriers specially adapted for baby carriers worn on the body; covers for shopping carts, namely, [applicant must further specify goods by common commercial name in Class 18 or delete]; diaper bags; infant carriers worn on the body; pouch baby carriers; pouches, namely, [applicant must further specify goods by common commercial name, e.g., felt pouches]; safety harnesses for kids, namely, [applicant must further specify goods by common commercial name in Class 18 or delete]; sling bags for carrying infants; slings for carrying babies or infants worn on the body”

 

Class 20:         “babies' baskets, namely, [applicant must further specify goods by common commercial name, e.g., moses baskets]; babies' bouncing chairs; babies' chairs; babies' cot; babies' cribs; babies' furniture; baby changing mats; baby support cushion; beddings, namely, [applicant must further specify goods by common commercial name in Class 20 or delete]; beds; bolsters as cushions; booster chairs; changing tables for babies; children's feeding seats; children's sleeping mats; cots and moses basket for baby and young children; cushions for infants; cushions; folding beds; head support cushions for babies; high chair for babies; infant beds; infant bouncers; infant walkers; mat for infant playpens; maternity pillows; mattresses; nap mats; nursing pillows; pillows for cradling, supporting, propping or feeding babies not for medical purposes; pillows; playpens; portable beds; potty chairs; safety gates of metal for babies and children; safety gates of non-metal for babies and children; chairs adapted for babies; sleeping bag; sleeping mats; support cushioning for use in car safety seats for babies; support pillows for babies”

 

Class 21:         “Non-electric food blenders”

 

Class 24:         “babies' blankets; baby bedding, namely, [applicant must further specify goods by common commercial name, e.g., fitted crib sheets]; [specify, e.g., swaddle] blankets; crib fitted sheets; handkerchiefs of textile; lovies, namely, [applicant must further specify goods by common commercial name in Class 24 or delete]; textiled goods for use as bedding, namely, [applicant must further specify goods by common commercial name, e.g., fitted crib sheets]; waterproof crib fitted sheets”

 

Class 28:         “accessories to action figures toys; accessories to dolls; action figures; toy air pistols; baby multiple activity toys; baby rattles incorporating teething rings; baby rattles; balls for games; balls, namely, [applicant must further specify goods by common commercial name, e.g., basketballs]; baseballs; basketballs; bath toys; bathtub toys; battery-operated toys, namely, [applicant must further specify goods by common commercial name, e.g., remote controlled cars]; battery-powered computer game with LCD screen which features animation and sound effects; toy building blocks; chess and board games; chessboards; children's activity tables containing manipulative toys; children's educational toys for developing fine motor skills, cognitive skills; children's multiple activity toys; cloth toys, namely, [applicant must further specify goods by common commercial name, e.g., dolls]; collection of figures for parlour games; computer game apparatus other than coin operated or those adapted for use with television receivers, namely, [applicant must further specify goods by common commercial name, e.g., battery-powered computer game with LCD screen]; controllers for game consoles; controllers for toys, namely, {specify toys, e.g., cars, planes, etc.}; crib toys; darts; decorations for Christmas trees, namely, [applicant must further specify goods by common commercial name, e.g., ornaments]; dolls; dolls' clothes; dolls' houses; toy drones; educational toys, namely, [applicant must further specify goods by common commercial name, e.g., toy blocks]; electronic learning toys, namely, [applicant must further specify goods by common commercial name]; fabric toys, namely, [applicant must further specify goods by common commercial name, e.g., dolls]; fantasy character toys; fishing rods; flying discs; gloves for games, namely, [applicant must further specify goods by common commercial name]; hand-held unit for playing electronic games; imitation cosmetic preparations being toys; infant action crib toys; infant development toys; infant's rattles; inflatable toys; jigsaw puzzles; jump ropes; kaleidoscopes; kites; toy LED light sticks; marbles for games; multiple activity toys; toy musical boxes; musical games, namely, [applicant must further specify goods by common commercial name]; musical toys, namely, [applicant must further specify goods by common commercial name]; ornaments and decorations for Christmas trees, namely, [applicant must further specify goods by common commercial name]; parlour games; toys, namely, percussion caps; plastic race tracks; plastic toys, namely, [applicant must further specify goods by common commercial name]; play mats containing infant toys; playground balls; playing balls; playing cards; plush toys animals; plush toys; puppets; quoits; rackets for games, namely, [applicant must further specify game by common commercial name, e.g., tennis]; radio-controlled toy vehicles; bay and infant rattles; rideable toys; ring games; roller skates; scale model cars; toy scale model kits; scale model kits; toy scooters; skateboards; skipping ropes; skis; sleds; plaything slides; slingshots; soap bubbles toys; soccer balls; soft toys, namely, multi-activity toys, jungle gyms, mobiles, and baby rattles; spinning tops; squeezable squeaking toys; squeeze toys; stacking toys; stuffed toys; surfboards; swimming kick boards; swings; Baby multiple activity toys incorporating teethers; toy costumes; toy figurines; toy guns; toy masks; toy mobiles; toy musical instruments; toy robots; toy vehicles; toys designed to be attached to high chairs or car seats; toys for children, namely, [applicant must further specify goods by common commercial name]; toys for sandpits; toys made of metal, namely, [applicant must further specify goods by common commercial name]; toys made of wood, namely, [applicant must further specify goods by common commercial name]; toys relating to magic, namely, [applicant must further specify goods by common commercial name]; toys simulating objects used by adults in day to day activity; toys sold in kit form, namely, [applicant must further specify goods by common commercial name]; toys with teethers, namely, [applicant must further specify goods by common commercial name]; trampolines; video and electronic games, namely, [applicant must further specify goods by common commercial name in Class 28 or delete]; video game machines”

 

Class 35:         “direct mail advertising services; display services for merchandising; import and export agency services; on-line advertising on a computer network; business organisation, operation and supervision of loyalty and incentive schemes; advertising services, namely, presentation of goods on communication media including the Internet for retail purposes; procurement services for others, namely, purchasing {specify goods or services, e.g., weapons, office furniture}; purchasing goods and services for other businesses; providing business information via a web site; provision of an on-line marketplace for buyers and sellers of goods and services on the Internet or a communications network; retail service, namely, [applicant must further specify services by common commercial name, providing a retail store service featuring baby items]; sales promotion for others; the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods; wholesale service, namely, [applicant must further specify services by common commercial name, providing a wholesale store service featuring baby items]; window dressing services for advertising purposes”

 

Class 41:         “Provision of non-downloadable animated cartoons via a video-on-demand service”

 

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.  See TMEP §1402.04.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to International Classes 06, 07, 09, 10, 11, 18, 20, 21, 24, 28, 35, and 41.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Requirements for Combined Application - Advisory:

 

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 and/or services that are classified in at least 12 classes; however, applicant submitted a fee(s) sufficient for only 8 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.

 

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.

 

Responding to Office Action:

 

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.

 

If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

/Dominic R. Fathy/

Trademark Examining Attorney

Law Office 104

(571) 272-8801

dominic.fathy@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 3/29/2017 FOR U.S. APPLICATION SERIAL NO. 87278064

 

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 3/29/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.