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: 9/14/2017

 

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, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

• Serach deferred
• Identification of Goods
• Information about the Goods and Services

 

 

SEARCH DEFERRED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods is indefinite and must be clarified because the nature of the goods and services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the field of use in which the goods are used or intended to be used, or the specific purpose of the goods.  See TMEP §1402.01. 

 

The examining attorney has provided suggestions in brackets, below.  Applicant may adopt the following wording, if accurate: 

 

 

An application must specify, in an explicit manner, “the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.”  TMEP §1402.01; see 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6).  Therefore, proper punctuation in identifications of goods and/or services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons and periods in an identification.  Id. 

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, non-medicated hand soap, shampoo).  TMEP §1402.01(a).  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The examining attorney has inserted in brackets suggestions that are necessary for clarity.  If accurate, the applicant may amend the classification and identification of goods and services as follows:

Class 5:            Disposable diapers for babies

Class 9:            Motion picture films about [indicate subject matter, e.g., children’s entertainment]; downloadable television shows about [indicate subject matter, e.g., children’s entertainment]; compact discs featuring music; downloadable series of fictional short stories; computer game programs; video game cartridges; video game discs; video game software; computer game cartridges; computer game discs; computer game software; software featuring music, [indicate type of stories, e.g., fictional stories for children] and [describe the type of games and activities, e.g.,  games and activities for children]; consumer electronics, namely, television sets, radios, DVD players, DVD recorders, compact disc players, compact disc recorders, video cassette players, video cassette recorders, computers, calculators, camcorders, telephones, cordless telephones, video cameras, cameras, digital cameras, electronic personal organizers, karaoke machines, MP3 players, personal stereos, personal digital assistants, walkie-talkies; magnetically encoded gift cards; eyeglasses, sunglasses, decorative refrigerator magnets, downloadable electronic publications in the nature of magazines and newsletters in the field of [indicate subject matter]; office and school supplies, namely, graduated rulers, folding rulers, tape rulers

Class 14:          Jewelry; jewelry boxes; jewelry cases; key rings of precious metal; clocks; watches; watch bands; non-monetary coins; collectable coins

Class 16:          Printed series of fictional short stories; books in the field of [indicate subject matter]; bookmarks; autograph books; calendars; binders;  address books; almanacs; appointment books; [indicate type of arts and craft kits, e.g., arts and craft paint kits]; cartoon strips; coasters of paper; coloring books; comic books; comic strips;  coupon books; decals, diaries;  drawing rulers; dry erase writing boards and writing surfaces; erasers; flash cards; magazines in the field of [indicate subject matter or indicate general feature magazines]; paper gift cards; gift wrapping paper; globes; greeting cards; guest books; maps; memo pads; modeling clay; newsletters and printed periodicals featuring stories, games and activities for children; newspapers; note paper; notebook paper; notebooks; paintings; paper cake decorations; paper flags; paper gift wrap bows; paper napkins; paper party bags; paper party decorations; paper pennants; paper place mats; paper table cloths; paperweights; pen and pencil cases and boxes; pen or pencil holders; pencil sharpeners; photograph albums; photographs; picture books; plastic shopping bags; portraits; postcards; posters; printed art reproductions; printed invitations; printed menus; recipe books; rubber stamps; score cards; series of fiction books; stamp albums; staplers; stationery; stickers; trading cards; ungraduated rulers; writing implements

Class 18:          Costumes, namely, costumes for animals; backpacks; book bags; all purpose sport bags; athletic bags; beach bags; gym bags; knapsacks; overnight bags; all purpose carrying bags; coin purses; diaper bags; duffel bags; fanny packs; handbags; key cases; leather key chains; luggage tags; luggage; purses; shopping bags made of leather, mesh or textile; tote bags; umbrellas; wallets

Class 21:          Plastic coasters

Class 24:          Bath towels; hand towels; bed blankets; comforters; afghans; bath linen; bed canopies; bed linen; bed sheets; pillow cases; pillow covers; bed skirts; bed spreads; blanket throws; calico; cloth coasters; cloth doilies; cloth flags; cloth pennants; crib bumpers; curtains; fabric flags; felt pennants; golf towels; handkerchiefs; hooded towels; household linen; kitchen towels; barbecue mitts; oven mitts; pot holders; quilts; receiving blankets; silk blankets; table linen; textile napkins, namely, [indicate type, e.g., table napkins of textile, textile napkins for removing makeup]; textile place mats; textile tablecloths; throws; towels; washcloths; woolen blankets

Class 25:          Shirts; shorts; pants; overalls; skirts; dresses; coats; socks; underwear; sweatshirts; sweaters; footwear; belts; jackets; gloves; mittens; headwear; ear muffs; scarves; sleepwear; wrist bands; swimwear; beachwear; cloth bibs; [indicate type of costumes, e.g., Halloween costumes]; hosiery; infantwear; ponchos; rainwear

Class 28:          Hand-held units for playing electronic games for use with external display screen or monitor; doll costumes; toys, namely, [indicate type, e.g., children’s multiple-activity toys];  plush toys; action skill games; action figures and accessories therefor; board games; card games; badminton sets; balloons; basketballs; bath toys; baseballs; beach balls; bean bags; bean bag dolls; toy building blocks; bowling balls; bubble making wands and solution sets; chess sets; children's play cosmetics; Christmas stockings; Christmas tree ornaments and decorations; collectable toy figures; crib mobiles; crib toys; disc toss toys; dolls; doll clothing; doll accessories; doll playsets; electric action toys; equipment sold as a unit for playing card games; fishing tackle; golf balls; golf gloves; golf ball markers; hand held units for playing electronic games other than those adapted for use with an external display screen or monitor; hockey pucks; inflatable toys; jigsaw puzzles; jump ropes; kites; magic tricks; marbles; music box toys; musical toys; parlor games; party favors in the nature of small toys; paper party hats; party games; playing cards; puppets; roller skates; rubber balls; skateboards; snow boards; snow globes; soccer balls; spinning tops; squeeze toys; stuffed toys; table tennis tables; talking toys; target games; teddy bears; tennis balls; toy action figures and accessories therefor; toy mobiles; toy bucket and shovel sets; toy vehicles; toy scooters; toy cars; toy model hobbycraft kits; toy figures; toy banks; toy trucks; toy watches; wind-up toys; yo-yos; games and activities, namely, [indicate type of games and activities, e.g., outdoor activity game equipment sold as a unit comprising sports balls for playing games]; paper party favors

Class 29:          Potato-based snack foods; potato chips; processed nuts; roasted nuts; seasoned nuts; meat; poultry; candied fruit; milk dried fruits; frozen vegetables; raisins; snack mix consisting primarily of processed fruits, processed nuts and/or raisins; fruit-based snack foods; jams; jellies; fruit preserves; canned fruit; dried fruit; frozen fruit; processed fruit; canned vegetables

Class 30:          Ice cream and frozen yogurt; chewing gum; bread; muffins; muffin bars, namely, [describe more fully, e.g., muffins in bar form]; pastry; waffles; pancakes; cookies; crackers; biscuits; popcorn; corn chips; pretzels; puddings; coffee; tea; breakfast cereal; preparations made from cereal, namely, ready to eat cereal derived food bars; cakes; cake mixes; candies; cake decorations made of candy; cereal-based snack foods; chocolate; confectionery chips for baking; flavored gelatin desserts; frozen confections; frozen yogurt; ice milk; licorice; marshmallows; pies; sherbets

Class 32:          Drinking water; energy drinks; flavored waters; fruit juices; fruit-flavored beverages; juice base concentrates; lemonade; non-alcoholic punch; carbonated beverages, namely, [indicate type, e.g., carbonated water, fruit-flavored carbonated drinks]; non-alcoholic beverages containing fruit juices; smoothies; sparkling water; sports drinks; vegetable juices

Class 41:          Entertainment, namely, a continuing [indicate type, e.g., news, comedy, variety] show broadcast over television; providing a website featuring non-downloadable game software; children's entertainment, namely, providing interactive play areas, instructional classes in the field of [indicate field or subject matter of educational activity] and social gatherings for children

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).

 

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 and/or services that are classified in at least 13 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

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 13 classes; however, applicant submitted a fee(s) sufficient for only 1 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.

 

 

INFORMATION ABOUT GOODS/SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §§814, 1402.01(e).  Specifically, applicant must submit the following:  the subject-matter of the movies and entertainment, the games, the films, the toys, etc.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651 (citing In re Cheezwhse.com, Inc., 85 USPQ2d at 1919; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814).  Merely stating that information about the goods or 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 GUIDELINES

 

For this application to proceed further, 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 specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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 and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).

 

 

 

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.  

 

 

 

/rscb/

Robin S. Chosid-Brown

Trademark Examining Attorney

Law Office 102

571-272-9252

robin.chosid-brown@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 9/14/2017 FOR U.S. APPLICATION SERIAL NO. 87558333

 

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 9/14/2017 (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.