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: 2/2/2018

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

SEARCH CONDUCTED

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

PRIOR PENDING APPLICATION

A potentially conflicting mark in a prior-filed pending application may present a bar to registration. Information regarding pending Application Serial No(s). 87505159, is enclosed. The effective filing date of the referenced application precedes applicant’s filing date. There may be likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 87505159. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office Action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

Application Status

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. Please note that an application serial number or registration number is needed to access this database. TARR is available 24 hours a day, 7 days a week.

ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES REQUIRED

Applicant has elected to use wording in the identification of goods and services that is not found in the U.S. Acceptable Identification of Goods and Services Manual. The wording that applicant has chosen to use instead does not meet the standards set forth in the Manual and is unacceptable in significant part. Specifically, the following underlined wording in the identification of goods and services is indefinite and must be clarified as set forth below. See TMEP §1402.01. The exact nature of the goods and services cannot be determined from this wording. The bolded wording is misclassified or suggests goods or services in multiple classes. The italicized wording is redundant as explained below.

Class 34

Tobacco; smokers' articles; [Specify type, for instance, “Smokers’ articles in the nature of hemp wicks for lighting”] bongs; [Clarify the nature of the goods and their purpose.] hookahs; shishas; [Specify type, for instance, hookash.] vaporisers used to vaporise the active ingredients of plant material for the purpose of inhalation; [Clarify purpose, for example, oral vaporizers for smokers. See the ID Manual for additional examples.] matches; herbs for smoking; molasses blends for smoking; [Clarify whether tobacco or other goods] flavourings, other than essential oils, for use in smoker's articles; [Specify using common commercial name, for example, electronic cigarette liquid (e-liquid) comprised of propylene glycol.] cigar cases; cigarette cases; chewing tobacco; cigar holders; cigarette holders; cigarette filters; cigarette papers; cigarettes; cigarettes containing tobacco substitutes, not for medicinal purposes; cigars; snuff; electronic cigarettes; filter filaments for cigarettes; [Clarify whether cigarette filters.] flavourings, other than essential oils, for use in electronic cigarettes; Kretek (Clove) cigarettes (other than for medical use); [Specify type of goods without using parenthesis as explained below, for instance, “cigarettes containing…”] liquid nicotine solutions for use in electronic cigarettes; pipe cigarettes; [Clarify whether these are smoking pipes and cigarettes or a type of cigarette.] tobacco free cigarettes, other than for medical purposes; [Clarify whether for quitting smoking; or specify the goods further. Note that cigarettes for smoking cessation are classified in Class 5 – not 34.] lighters for smokers; matchboxes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; snuff boxes; tobacco jars; tobacco pouches; brushes specifically adapted to clean smoker's articles; [Misclassified and indefinite. Clarify the nature of the goods using the common name. Note that “brushes for pipes,” for example, are classified in Class 21 – not 34. ] grinders for grinding smoking products, including tobacco and herbs; containers specifically adapted to carry smoker's articles; parts, fittings and accessories for the aforementioned goods [Specify using the common commercial name(s), for example, Smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts.]

Class 35

Retail and wholesale services, including, [See the paragraphs below for additional explanation.] retail and wholesale services relating books, [Correct grammar and clarify whether the services “feature” such goods.] magazines, printed matter, [Specify what category of goods this refers to.] stationery, clothing, smoking apparatus, [Specify the general category of goods using a common commercial name.] sun screen, tobacco, jewellery, towels, clothing, footwear and headgear; [Specify what category of goods this refers to; “headgear” may refer to hats, helmets, or a variety of other goods.] including such services provided online via the Internet or any other information distribution medium

The identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

The wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services. See TMEP §1402.03(a).

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “clothing.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).

Applicant must amend this wording to specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name for the goods and/or services, then applicant must describe the nature of the goods and/or services as well as their main purpose, channels of trade, and the intended consumer(s). See TMEP §1402.01.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

The specific problems with the identification discussed above are provided for clarity only. Applicant should review the entire identification to ensure that it accurately identifies applicant’s goods and/or services using common commercial wording.

It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).

Applicant may find acceptable identification wording by: 1) using the sample wording provided in the Identification Manual for this purpose; 2) researching the Register for wording that has recently been accepted by the Office and is consistent with the current rules governing identifications; 3) using wording that is the common name widely used in the relevant industry or trade; or 4) drafting wording that otherwise complies with the requirements described in the Code of Federal Regulations as exemplified by the entries in the Identification Manual.

MULTI-CLASS APPLICATION REQUIREMENTS

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). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 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).

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.

RESPONSE GUIDELINES

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

E-mail may not be used to file responses to Office actions. These documents may be filed electronically using TEAS. TMEP § 304.02. Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement.

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.

/efennessy/

Edward Fennessy

Examining Attorney, Law Office 114

571-272-8804

Edward.Fennessy@USPTO.Gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To:	Thendro LLC (dctm@pillsburylaw.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 87657178 - WATERFALL - 21058-455097
Sent:	2/2/2018 5:14:58 PM
Sent As:	ECOM114@USPTO.GOV
Attachments:	Attachment - 1 Attachment - 2