To: | Mattress Firm, Inc. (ipdocketing@haynesboone.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87582659 - OCTAVE - 42032.558US |
Sent: | 10/28/2017 12:23:57 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87582659
MARK: OCTAVE
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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: Mattress Firm, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 10/28/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS AND SERVICES
Applicant has identified the following in Class 20:
“Furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and related bedding products; Retail and online retail store services featuring furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and related bedding products.”
Many of the goods applicant has identified are indeed Class 20 goods. However, there are Class 24 goods and Class 35 services included in this identification. Therefore, applicant may respond by (1) adding International Classes 24 and 35 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “mattress protectors, mattress covers, pillow covers, sheets” and “retail and online retail store services featuring furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and related bedding products” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. 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 requirements specified in this Office action.
The wording “mattress protectors” is not acceptable because it is indefinite. See TMEP §§1402.01, 1402.03. Applicant must clarify the nature of the goods using the common commercial name for the goods. The following is suggested: “mattress protectors in the nature of covers,” in Class 24.
The wording “sheets” is not acceptable because it is indefinite. See TMEP §§1402.01, 1402.03. Applicant must clarify the nature of the goods using the common commercial name for the goods. The following is suggested: “bed sheets,” in Class 24.
Applicant’s “pillow covers” are classified in International Class 24. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The wording “related bedding products” is not acceptable because it is indefinite. See TMEP §§1402.01, 1402.03. Applicant must identify the actual bedding products it provides by specifying either the common generic name of each product or describe the nature, purpose, and/or intended use of each product. See TMEP §§1402.01, 1402.03. The following is suggested: “bedding products, namely, [identify the goods using their common commercial name, e.g., bed headboards, bed fittings, not of metal, bed bases, etc.],” in Class 20, and/or, “bedding products, namely, [identify the goods using their common commercial name, e.g., bed spreads, bed sheets, box spring covers, etc.],” in Class 24.
The wording “Retail and online retail store services featuring furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and related bedding products” is not acceptable because the “related bedding products” that are the subject matter of applicant’s retail store services are not specific and do not identify a definite field of use. See TMEP §1402.01. Applicant must identify the subject matter of its retail store services with greater specificity, such as identifying the particular field of the goods. The following is suggested: “Retail and online retail store services featuring furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and bedding,” in Class 35.
Applicant may adopt any or all of the following suggestions, if appropriate:
International Class 20:
“Furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, pillows, and bedding products, namely, [identify the goods using their common commercial name, e.g., bed headboards, bed fittings, not of metal, bed bases, etc.];”
International Class 24:
“Mattress protectors in the nature of covers; mattress covers; bed sheets; pillow covers; bedding products, namely, [identify the goods using their common commercial name, e.g., bed spreads, bed sheets, box spring covers, etc.];” and
International Class 35:
“Retail and online retail store services featuring furniture, beds, mattresses, mattress frames, mattress foundations, box springs, mattress toppers, mattress protectors, mattress covers, sheets, pillows, pillow covers, and bedding.”
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 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least THREE classes; however, applicant submitted a fee sufficient for only ONE class. 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.
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.
RESPONDING TO THIS OFFICE ACTION
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.
/Matthew G. Galan/
Examining Attorney
Law Office 113
(571) 272-6142
matthew.galan@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.