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: 1/12/2018

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s December 15, 2017 communication.

 

In the previous Office action dated September 29, 2017, requirements were issued regarding (1) identification of goods, (2) multiple-class application requirements, and (3) request for information.

 

The following requirements are now made FINAL:  (1) identification of goods, (2) multiple-class application requirements, and (3) request for information.  See 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES MADE FINAL applicant must address:

 

• Identification of Goods
• Multiple-Class Application Requirements
• Request for Information

 

IDENTIFICATION OF GOODS

 

Portions of applicant’s identification of goods are indefinite and/or overbroad and must be clarified because the precise nature of the goods is unclear.  TMEP §§1402.01, 1402.03.  The USPTO has the discretion to determine the degree of particularity needed to clearly identify the goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  Explanations and suggested acceptable wording are found below.

 

At the outset, it is important to note that (1) there is no single marketplace definition of the term “bioleather”, and (2) the wording is not recognized under the Nice Classification System.  The wording “bioleather” has varying usage such that there is no one meaning; sometimes the term is used in association with eco-friendly animal leather, but it also can be used in association with non-animal products.  See http://www.leather-dictionary.com/index.php/Bio_leather (noting that “[a]n exact ruling on how and when a product can be called ‘bio’ … is not available” and that “[s]ometimes leathers that are chrome- and metal-free are referred to as bio leather”). As such, it is unclear if this wording refers to imitation leather or sustainably sourced animal leather.  The wording “bioleather” injects ambiguity into certain identifications where material composition determines classification.  Thus, where discussed below, it is necessary for the applicant to clarify the nature of the goods sufficient to justify classification into one international class. 

 

Additionally, proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

In International Class 12:

 

The wording (i) “vehicle linings and coverings, namely, … vehicle dashboards”, (ii) “bioleather vehicle linings and coverings, namely, … vehicle dashboards”, and (iii) “linings and bioleather linings for automobiles, namely, … vehicle dashboards” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, a vehicle dashboard is not a subset of vehicle linings/coverings; rather, a vehicle dashboard is a structural part of a vehicle.  Applicant already has the wording “fitted dashboard covers for vehicles” listed in the identification of goods, so applicant should either delete the above entries or, alternatively, list the “vehicle dashboards” under the “structural parts of automobiles.”

 

In International Class 18:

 

Applicant must clarify the wording (i) “bags” and (ii) “bioleather bags and weekend bags” in the identification of goods in International Class 18 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear.  Applicant must amend this wording to specify the common commercial or generic name of the particular types of bags.  See TMEP §1402.01. Further, this wording could identify goods in more than one international class.  For example, “vacuum cleaner bags” are classified in Class 7, “knife bags” are classified in Class 8, “computer bags” are classified in Class 9, “body bags” are classified in International Class 22, etc.

 

In International Class 22:

 

Applicant must clarify the wording (i) “bioleather fibers”, (ii) “bioleather stuffing fibers”, and (iii) “bioleather fibers for use in the manufacture of fabrics, textiles, yarns, carpets, clothing and apparel” in the identification of goods in International Class 22 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear.  Further, this wording could identify goods in more than one international class.  This wording is broad enough to encompass leather or imitation leather for further manufacture in International Class 18.  The trademark examining attorney suggests amending to “fibers for textile use, namely, collagen-based fibers” in International Class 22, if accurate.

 

Applicant must clarify the wording “bioleather fibers for non-textile use” in the identification of goods in International Class 22 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear. International Class 22 only covers fibers that are for textile use.  See http://www.wipo.int/classifications/nice/nclpub/en/fr/20180101/classheadings/?class_heading=18&explanatory_notes=show&lang=en&menulang=en (noting that “Class 22 includes … raw fibrous textile materials.”).  Further, this wording could identify goods in more than one international class. This wording is broad enough to encompass leather or imitation leather for further manufacture in International Class 18. 

 

Applicant must clarify the wording “bioleather materials” in the identification of goods in International Class 22 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear.  Further, this wording could identify a wide variety of goods in more than one international class.  For example, this wording could encompass, inter alia, collagen for use in further manufacture in International Class 1, or bioleather in the nature of a leather substitute for further manufacture in International Class 18.

 

In International Class 23:

 

Applicant must clarify the wording (i) “bioleather threads” and (ii) “bioleather threads and yarns” in the identification of goods in International Class 23 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear.  Specifically, it is ambiguous if this refers to threads as leather alternative in Class 18, or collagen-based threads in Class 23.  As such, this this wording could identify goods in more than one international class.  For instance, “leather thread” and “threads of imitation leather” are classified in International Class 18.  The trademark examining attorney suggests amending to “bioleather threads, namely, collagen-based threads for textile use” in International Class 23, if accurate.

 

Applicant must clarify the wording (i) “bioleather yarns for non-textile use” and (ii) “bioleather yarns for use in the manufacture of fabrics, textiles, yarns, carpets, clothing and apparel” in the identification of goods in International Class 23 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the precise nature of the goods is unclear.  Class 23 covers only yarns and threads that are for textile use.   See http://www.wipo.int/classifications/nice/nclpub/en/fr/20180101/information_files/class/23/?lang=en (noting that “yarns and threads, whether natural or synthetic, are in Class 23 so long as they are for textile use.”).  Yarns not for textile use are classified in different international classes, generally based on their material composition.  However, as noted above, there is no single marketplace definition of the term “bioleather”—the wording is sometimes used in association with eco-friendly animal leather.  Thus, it is unclear if this material is imitation leather or sustainably sourced animal leather.  Further, this wording could identify goods in more than one international class—e.g., synthetic fibers and filaments for use in the manufacture of fabrics, textiles, yarns and carpets in International Class 22, or yarns in the nature of leather substitute not for textile use in International Class 18.

 

The following identification of goods is suggested, if accurate (changes in bold, deletions in strikethrough font):

 

• Class 1:  Bioleather materials, namely, collagen for use in the manufacturing of a leather alternative, collagen-based leather alternative

 

• Class 7:  bags, namely, vacuum cleaner bags and bioleather vacuum cleaner bags

 

• Class 8:  bags, namely, knife bags and bioleather knife bags

 

• Class 9:  Bioleather tech accessories, namely, phone cases, mobile phone cases, tablet and computer cases; bags, namely, computer bags, bioleather computer bags

 

• Class 12:  Coverings for vehicle seats and vehicle components, namely, fitted vehicle seat covers; vehicle seats; structural parts of automobiles, namely, automobile seats, vehicle dashboards; coverings for automobile seats and automobile components, namely, fitted automotive seat covers; vehicle linings and coverings, namely, fitted covers for vehicles, fitted covers for vehicle steering wheels, fitted dashboard covers for vehicles, vehicle dashboards, gear shift covers; bioleather vehicle linings and coverings, namely, fitted covers for vehicles, fitted covers for vehicle steering wheels, fitted dashboard covers for vehicles, vehicle dashboards, gear shift covers; linings and bioleather linings for automobiles, namely, fitted vehicle covers for automobiles, fitted dashboard covers for vehicles, vehicle dashboards, gear shift covers, steering wheel covers for automobiles

 

• Class 14:  Bioleather watch bands and straps

 

• Class 18:  Biofabricated leather; biofabricated leather goods, namely, all-purpose carrying bags, athletic bags, backpacks, carry-on bags, change purses, duffel bags, luggage; bioleather being collagen-based leather alternative; bioleather goods, namely, all-purpose carrying bags, athletic bags, backpacks, carry-on bags, change purses, duffel bags, luggage; bioleather handbags; handbags, purses and wallets; bioleather handbag, purses and wallets; backpacks, book bags, sports bags, bum bags; bioleather backpacks, book bags, sports bags, bum bags; suitcases; bioleather suitcases; bags, namely, {specify Class 18 goods, e.g., fashion handbags, beach bags, carry-on bags, gym bags, messenger bags, purses}; weekend bags; bioleather bags, namely, {specify Class 18 goods, e.g., fashion handbags, beach bags, carry-on bags, gym bags, messenger bags, purses}, weekend bags; bioleather fibers in the nature of a leather alternative for further manufacture; bioleather materials, namely, a leather alternative

 

• Class 20:  Furniture; biofabricated furniture; bioleather furniture; furniture made from bioleather

 

• Class 22:  Fibers, namely, textile fibers, synthetic fibers, semi-synthetic fibers; biofabricated fibers in the nature of bioleather textile fibers; bioleather fibers for textile use, namely, collagen-based fibers; textile fibers; bioleather stuffing fibers; bioleather textile fibers, namely, collagen-based fibers; bioleather fibers for nontextile use; bioleather fibers for use in the manufacture of fabrics, textiles, yarns, carpets, clothing and apparel; ropes and strings; bioleather ropes and strings; tents; bioleather tents; tarpaulins; bioleather tarpaulins; bioleather materials; sails; bioleather sails; sacks, namely, bivouac sacks, sacks for the transportation or storage of materials in bulk; bioleather sacks, namely, bivouac sacks, sacks for the transportation or storage of materials in bulk; padding, cushioning and stuffing materials, not of rubber, plastics or paper; bioleather padding, cushioning and stuffing materials, not of rubber, plastics or paper

 

• Class 23:  Yarns; bioleather yarns; bioleather threads; bioleather threads and yarns; bioleather yarns for textile use; bioleather yarns for non-textile use; bioleather yarns for use in the manufacture of fabrics, textiles, yarns, carpets, clothing and apparel;  bioleather threads, namely, collagen-based threads for textile use

 

• Class 24:  Textiles, namely, bioleather fabrics for textile use, knitted fabrics; bioleather textiles in the nature of bioleather fabrics; products made from textiles, namely, place mats of textile, quilts of textile, table cloths of textile, textile fabric of animal skin imitations, textile wall hangings, towels of textile; products made from bioleather textiles, namely, place mats of textile, quilts of textile, table cloths of textile, textile fabric of animal skin imitations, textile wall hangings, towels of textile

 

• Class 25:  Clothing, namely, shirts, pants, dresses, skirts, hats, scarves, belts; apparel, namely, shirts, pants, dresses, skirts, hats, scarves, belts; men's, women's and children's clothing and apparel, namely, shirts, pants, dresses, skirts, hats, scarves, belts; bioleather clothing, namely, shirts, pants, dresses, skirts, hats, scarves, belts; bioleather apparel, namely, shirts, pants, dresses, skirts, hats, scarves, belts; bioleather men's, women's and children's clothing and apparel, namely, shirts, pants, dresses, skirts, hats, scarves, belts; footwear; bioleather footwear; athletic shoes and footwear; bioleather athletic shoes and footwear

 

• Class 26:  Lace and embroidery; ribbons and braid; bioleather lace and embroidery; bioleather ribbons and braid

 

• Class 27:  Floor coverings; bioleather floor coverings; floor coverings made of bioleather

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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).

 

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.

 

MULTIPLE-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 Section 1(b):

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 14 classes; however, applicant submitted fees sufficient for only 12 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).

 

See 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.

 

REQUEST FOR INFORMATION

 

Applicant did not respond fully to the request for information in the September 29, 2017 Office action.  Specifically, while applicant did address the Trademark Examining Attorney’s specific questions, applicant failed to provide the requested product information and documentation.  Thus, this requirement is made final.

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and a photograph of the identified goods. 

 

If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

RESPONSE OPTIONS

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

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.  

 

 

 

/Eric Sable/

Law Office 117

571-272-4653

Eric.Sable@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 1/12/2018 FOR U.S. APPLICATION SERIAL NO. 87513328

 

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 1/12/2018 (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.