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: 9/27/2017

 

 

 

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.  

 

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 Refusals and/or Requirements

 

The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.

 

n  Amend description of goods/services

n  Comply with classification rules

n  Comply with filing basis requirements

n  Advisory concerning possible conflicting applications  (note that the applicant may, but  is not required to, address this issue at this stage of the application process)

 

 

GOODS/SERVICES

 

The wording noted below in the identification of goods/services is indefinite and must be clarified because it is vague and could include goods that belong in more than one class.  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 of the goods/services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The activities identified as “retail services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

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

 

 

Applicant may substitute the following wording, if accurate. Suggested changes are in bold, while items the applicant must clarify are in italics: 

 

 

Class 5:           Dietary and nutritional supplements; protein dietary supplements; dietary supplemental drinks; dietary supplements and dietetic preparations, namely, (list each “preparation,” e.g., dietary foods and beverages adapted for medical use); food supplements; vitamin and mineral supplements; food supplements for non-medical purposes; dietetic (name the “preparations,” e.g., beverages) adapted for medical use; food supplements consisting of trace elements; food supplements consisting of amino acids; appetite suppressants; medical preparations for slimming purposes.

 

 

Class 10:         baby bottles

 

Class 21:         Drinking vessels; drinking flasks; bottles, sold empty; drinking bottles for sports; sports bottles, sold empty; household food storage containers.

 

 

Class 35:         FILED UNDER SECTION 44(d) ONLY:  Retail store services featuring dietary and nutritional supplements, protein dietary supplements, dietary supplemental drinks, dietary supplements and dietetic preparations, food supplements, vitamin and mineral supplements, food supplements for non-medical purposes, dietetic preparations adapted for medical use, food supplements consisting of trace elements, food supplements consisting of amino acids, appetite suppressants, medical preparations for slimming purposes, sunglasses, sunglasses frames, cases for sunglasses, glasses for sports, protective headgear for the prevention of accident or injury, headwear for sporting activities for protection against injury, bags, bags for sports, bags for sports clothing, holdalls, holdalls for sports clothing, drinking vessels, drinking flasks, bottles, drinking bottles for sports, sports bottles, food storage containers, clothing, t-shirts, sweatshirts, hooded sweatshirts, socks, shorts, gym shorts, sports clothing, articles of sporting clothing, headgear, headwear, sports headgear, footwear, sports footwear, athletic footwear, trainers; Mail order  services featuring dietary and nutritional supplements, protein dietary supplements, dietary supplemental drinks, dietary supplements and dietetic preparations, food supplements, vitamin and mineral supplements, food supplements for non-medical purposes, dietetic preparations adapted for medical use, food supplements consisting of trace elements, food supplements consisting of amino acids, appetite suppressants, medical preparations for slimming purposes, sunglasses, sunglasses frames, cases for sunglasses, glasses for sports, protective headgear for the prevention of accident or injury, headwear for sporting activities for protection against injury, bags, bags for sports, bags for sports clothing, holdalls, holdalls for sports clothing, drinking vessels, drinking flasks, bottles, drinking bottles for sports, sports bottles, food storage containers, clothing, t-shirts, sweatshirts, hooded sweatshirts, socks, shorts, gym shorts, sports clothing, articles of sporting clothing, headgear, headwear, sports headgear, footwear, sports footwear, athletic footwear, trainers; Online retail (specify nature of services, e.g., store and ordering) services featuring dietary and nutritional supplements, protein dietary supplements, dietary supplemental drinks, dietary supplements and dietetic preparations, food supplements, vitamin and mineral supplements, food supplements for non-medical purposes, dietetic preparations adapted for medical use, food supplements consisting of trace elements, food supplements consisting of amino acids, appetite suppressants, medical preparations for slimming purposes, sunglasses, sunglasses frames, cases for sunglasses, glasses for sports, protective headgear for the prevention of accident or injury, headwear for sporting activities for protection against injury, bags, bags for sports, bags for sports clothing, holdalls, holdalls for sports clothing, drinking vessels, drinking flasks, bottles, drinking bottles for sports, sports bottles, food storage containers, clothing, t-shirts, sweatshirts, hooded sweatshirts, socks, shorts, gym shorts, sports clothing, articles of sporting clothing, headgear, headwear, sports headgear, footwear, sports footwear, athletic footwear, trainers,

 

 

Class 35:         FILED UNDER SECTION 1(b) ONLY:   Retail store services featuring frames for sunglasses, cases for eyeglasses, optical glasses, eye glasses, spectacles glasses, sports glasses, leather and imitations of leather, and goods made of these materials and not included in other classes, all purpose carrying bags, gym bags, athletic bags, sport bags, cosmetic bags sold empty, wallets, purses, travel bags, work bags in the nature of briefcases, hand bags, toiletry bags sold empty, beach bags, kit bags, hats, caps, bandanas, headbands, jumpers, hoodies, vests, jogging bottoms, hats, baseball caps, underwear, coats, leggings, basketball vests, long sleeve t-shirts, sleeveless hoodies, athletic clothing, namely, athletic shirts, athletic pants, athletic vests, casual clothing, namely, shirts, pants, trousers, body warmers, namely, gilets, clothing, namely, cowls, denims, belts, waist belts; Mail order  services featuring frames for sunglasses, cases for eyeglasses, optical glasses, eye glasses, spectacles glasses, sports glasses, leather and imitations of leather, and goods made of these materials and not included in other classes, all purpose carrying bags, gym bags, athletic bags, sport bags, cosmetic bags sold empty, wallets, purses, travel bags, work bags in the nature of briefcases, hand bags, toiletry bags sold empty, beach bags, kit bags, hats, caps, bandanas, headbands, jumpers, hoodies, vests, jogging bottoms, hats, baseball caps, underwear, coats, leggings, basketball vests, long sleeve t-shirts, sleeveless hoodies, athletic clothing, namely, athletic shirts, athletic pants, athletic vests, casual clothing, namely, shirts, pants, trousers, body warmers, namely, gilets, clothing, namely, cowls, denims, belts, waist belts; Online retail (specify nature of services, e.g., store and ordering) services featuring  frames for sunglasses, cases for eyeglasses, optical glasses, eye glasses, spectacles glasses, sports glasses, leather and imitations of leather, and goods made of these materials and not included in other classes, all purpose carrying bags, gym bags, athletic bags, sport bags, cosmetic bags sold empty, wallets, purses, travel bags, work bags in the nature of briefcases, hand bags, toiletry bags sold empty, beach bags, kit bags, hats, caps, bandanas, headbands, jumpers, hoodies, vests, jogging bottoms, hats, baseball caps, underwear, coats, leggings, basketball vests, long sleeve t-shirts, sleeveless hoodies, athletic clothing, namely, athletic shirts, athletic pants, athletic vests, casual clothing, namely, shirts, pants, trousers, body warmers, namely, gilets, clothing, namely, cowls, denims, belts, waist belts

 

 

 

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 may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

MULTI-CLASS FILING RULES

 

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 Sections 1(b) and 44:

 

(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 four classes; however, applicant submitted a fee(s) sufficient for only three 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  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.

 

FEES

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

 

FILING BASIS

 

The applicant has filed under Section 44(d) only as to Classes 5 and 21, under Section 44(d) only as to some services in Class 35 and under Section 1(b) only as to other services in Class 35.

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

 

Advisory Concerning Earlier Filed, Potentially Conflicting Applications

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in  prior-filed pending applications may present a bar to registration of applicant’s mark.

 

The filing dates of pending U.S. Application Serial Nos. 87117883 and 87975630 precede applicant’s filing date.  See attached referenced applications. Please note that the applicant in those applications is different from the applicant in this application. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

The USPTO applies the following legal authorities when processing a trademark and/or service mark application: 

 

• The Trademark Act of 1946, as amended
• The Trademark Rules of Practice, as amended
• Precedential court and Trademark Trial and Appeal Board decisions
• The USPTO’s Trademark Manual of Examining Procedure (TMEP), as periodically updated
• The USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP), as periodically updated 

 

See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp.  The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

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.

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 9/27/2017 FOR U.S. APPLICATION SERIAL NO. 87511040

 

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 9/27/2017 (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.