To: | Modern Meadow, Inc. (tmdocket@oblon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87513328 - ZOA - 800236US |
Sent: | 9/29/2017 12:48:37 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87513328
MARK: ZOA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Modern Meadow, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 9/29/2017
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On September 29, 2017, the trademark examining attorney and Mr. Brian Darville discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
SUMMARY OF ISSUES applicant must address:
IDENTIFICATION OF GOODS
Substantial 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 goods and 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.
In International Class 12:
The wording (i) “vehicle linings and coverings”, (ii) “bioleather vehicle linings and coverings” and (iii) “linings and bioleather linings for automobiles” 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. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01.
In International Class 18:
The wording (i) “leather goods”, (ii) “biofabricated leather goods”, and (iii) “bioleather goods” 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. Applicant must amend this wording to specify the common commercial or generic name of the particular goods. See TMEP §1402.01.
The wording “bioleather” 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. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. There is no single marketplace definition of the term “bioleather.” It is unclear if this material is imitation leather or sustainably sourced animal leather. Thus, the trademark examining attorney suggests amending to “bioleather being imitation leather” or “bioleather being leather substitute.”
Additionally, applicant has provided the application fees for only 9 international classes. Thus, not all international classes in the application are covered by the application fees. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class for which the application fee was submitted. 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 application requirements specified in this Office action.
In International Class 22:
The wording “fibers” 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. In particular, this wording could encompass “dietary fibers as nutritional supplements” in Class 5. Moreover, the wording “fibers” in the identification of goods is also 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. Applicant must amend this wording to specify the material composition of the fibers. See TMEP §1402.01. Applicant should also note that “bioleather fibers”, as discussed below, is likewise indefinite.
The wording “biofabricated fibers” 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
The wording “bioleather stuffing fibers” 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
The wording “bioleather fibers” 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. In particular, this wording could encompass raw cellulose material in Class 1, or imitation leather for further manufacture in Class 18. Moreover, this wording is also 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
The wording “bioleather fibers for textile use” 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
The wording “bioleather fibers for non-textile use” 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. In particular, this wording could encompass raw cellulose material in Class 1, or imitation leather for further manufacture in Class 18. Moreover, this wording is also 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
The wording “bioleather fibers for use in the manufacture of fabrics, textiles, yarns, carpets, clothing and apparel” 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. In particular, this wording could encompass raw cellulose material in Class 1, or imitation leather for further manufacture in Class 18. Moreover, this wording is also 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
In International Class 23:
The wording “bioleather threads” 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. In particular, this wording could encompass “leather thread” in International Class 18. Moreover, this wording is also 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. Applicant must amend this wording to specify the generic or common commercial name of the goods. See TMEP §1402.01.
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 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. Yarns not for textile use are generally classified based on material composition. However, there is no single marketplace definition of the term “bioleather.” It is unclear if this material is imitation leather or sustainably sourced animal leather. Thus, this wording is also 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. The trademark examining attorney suggests amending to “bioleather yarns in the nature of imitation leather, not for textile use” or “bioleather yarns in the nature of leather substitute, not for textile use”, both in International Class 18.
In International Class 24:
The wording (i) “Textiles”, (ii) “bioleather textiles”, (iii) “products made from textiles”, and (iv) “products made from bioleather textiles” 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. Applicant must amend this wording to specify the common commercial or generic name of the particular goods. See TMEP §1402.01.
In International Class 25:
If applicant’s “clothing” or “apparel” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing”/“apparel” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
The following identification of goods is suggested, if accurate (changes in bold, deletions in strikethrough):
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
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods that are classified in at least 12 classes; however, applicant submitted fees sufficient for only 9 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
REQUEST FOR INFORMATION
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.
Applicant must also address the following:
Additionally, applicant must respond to the following questions:
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE GUIDELINES
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.