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: 8/19/2017

 

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 the Issues

1.     Identification and Classification of the Goods;

2.     Advisory – Partial Abandonment.

 

 

Identification and Classification of the Goods

The wording “electric whisks” and “electric pasta makers” in the identification of goods in International Class 7 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the applicant must indicate that the goods are for household use. 

 

 

Additionally, the goods “steam irons and electric irons both for domestic use” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 8.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 

 

The wording “fans” and “heaters” in the identification of goods in International Class 11 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the applicant must indicate the type, function or use of the goods.

 

The wording “floor cleaning device consisting of cleaning pad with liquid cleaning preparation sold as a unit, all for household use” in the identification of goods is indefinite and must be clarified because the applicant must provide the common commercial name of the floor cleaning device.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Applicant may substitute the following wording, if accurate: 

 

 

“Steam cleaning machines in the nature of steam mops and handheld steam cleaning machines; power-operated dispensers and atomizers for use in dispensing cleaning and disinfectant preparations for household purposes; vacuum cleaners and multi-purpose steam cleaning machines both for domestic use; electric sweepers and electric mops, all for residential use; electric kitchen appliances for household use, namely, electric food blenders, electric food choppers and electric food processors, electric mixers, electric food and meat grinders, electric coffee grinders, electric juicers, electric juice extractors, electric fruit presses, electric fruit peelers, electric food slicers, electric egg beaters, electric whisks for household use, electric graters, electric vegetable peelers, electric pasta makers for domestic use” in International Class 7;

 

 

“Electric razors; electric irons for styling hair; electric hair straightening irons; electric hair curling irons; steam irons and electric irons both for domestic use;” in International Class 8;

 

 

“Electric hair dryers; coffee filters not of paper being part of electric coffee makers; electric apparatus for making coffee; electric coffee brewers; electric coffee machines; electric coffee makers; electric coffee percolators; electric slow cooker; multicookers; electric cookware and bakeware, for household use, namely, electric frying pans, electric roasters, electric broilers, electric grills, electric casseroles, electric rotisseries, electric pressure cookers, electric rice cookers, electric dutch ovens, electric cooking ovens, electric toaster ovens, electric waffle irons, electric hotplates, electric food steamers, electric food warmers, electric bread cookers and electric egg boilers; electric toasters; electric coffee makers; electric kettles; electric ice cream makers; and electric yogurt makers; beverage preparation machines, namely, electric beverage machines used to brew coffee, tea, and water infusions; air purifiers, electric fans, humidifiers, electric radiant heaters for household use” in International Class 11;

 

 

 

“Cleaning cloths, polishing cloths, cleaning pads, manually operated floor cleaning device, namely, a mop consisting of cleaning pad with liquid cleaning preparation sold as a unit, all for household use; beverageware, namely, mugs, cups, and teacups, drinking cups sold with lids therefor, reusable self-sealing lids for household use for cups travel mugs; drinking glasses, namely, tumblers; glass beverageware; bottles, sold empty; none being souvenir items; cookware, namely, pots, pans, grill pans, frying pans, sauce pans, muffin trays, and baking pans; household utensils, namely, spatulas, whisks, mixing spoons, mixing bowls, serving ladles, serving spoons, and serving forks; non-electric kitchen appliances, namely, manual milk frothers” in International Class 21.

 

 

The identification of goods or services should be clear, accurate and as concise as possible.  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules.  When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  However, it is the applicant's duty and prerogative to identify the goods and services.   TMEP Section 1402.01(d).

 

 

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).

 

 

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.

 

 

 

Advisory – Partial Abandonment

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  “Electric whisks, electric pasta makers” in International Class 7;   “Fans; heaters” in International Class 11; “floor cleaning device consisting of cleaning pad with liquid cleaning preparation sold as a unit” in International Class 21.

 

The application will then proceed with the following goods only: 

 

“Steam cleaning machines in the nature of steam mops and handheld steam cleaning machines; power-operated dispensers and atomizers for use in dispensing cleaning and disinfectant preparations for household purposes; vacuum cleaners and multi-purpose steam cleaning machines both for domestic use; electric sweepers and electric mops, all for residential use; electric kitchen appliances for household use, namely, electric food blenders, electric food choppers and electric food processors, electric mixers, electric food and meat grinders, electric coffee grinders, electric juicers, electric juice extractors, electric fruit presses, electric fruit peelers, electric food slicers, electric egg beaters, electric graters, electric vegetable peelers” in International Class 7;

 

“Electric razors; electric irons for styling hair; electric hair straightening irons; electric hair curling irons; steam irons and electric irons both for domestic use;” in International Class 8;

 

 

“Electric hair dryers; coffee filters not of paper being part of electric coffee makers; electric apparatus for making coffee; electric coffee brewers; electric coffee machines; electric coffee makers; electric coffee percolators; electric slow cooker; multicookers; electric cookware and bakeware, for household use, namely, electric frying pans, electric roasters, electric broilers, electric grills, electric casseroles, electric rotisseries, electric pressure cookers, electric rice cookers, electric dutch ovens, electric cooking ovens, electric toaster ovens, electric waffle irons, electric hotplates, electric food steamers, electric food warmers, electric bread cookers and electric egg boilers; electric toasters; electric coffee makers; electric kettles; electric ice cream makers; and electric yogurt makers; beverage preparation machines, namely, electric beverage machines used to brew coffee, tea, and water infusions; air purifiers, humidifiers” in International Class 11;

 

“Cleaning cloths, polishing cloths, cleaning pads, all for household use; beverageware, namely, mugs, cups, and teacups, drinking cups sold with lids therefor, reusable self-sealing lids for household use for cups travel mugs; drinking glasses, namely, tumblers; glass beverageware; bottles, sold empty; none being souvenir items; cookware, namely, pots, pans, grill pans, frying pans, sauce pans, muffin trays, and baking pans; household utensils, namely, spatulas, whisks, mixing spoons, mixing bowls, serving ladles, serving spoons, and serving forks; non-electric kitchen appliances, namely, manual milk frothers” in International Class 21.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

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.  

 

 

If the applicant has any questions, please contact the undersigned.

 

 

 

/Ty Murray/

Attorney-Advisor

United States Patent and Trademark Office

Law Office 113

571-272-9438

Ty.Murray@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 8/19/2017 FOR U.S. APPLICATION SERIAL NO. 87490130

 

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 8/19/2017 (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.