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: 7/10/2018

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on May 22, 2018 (hereinafter, “Response”).

 

The previous Office Action of November 22, 2017, and all supporting evidence attached thereto, is incorporated by reference herein. 

 

After review of the Response, the following is determined:

• The requirement for clarification of the identification of goods is MAINTAined and made FINAL; and
• The requirements as to multiple class applications are MAINTAined and made FINAL.

 

Requirements made final

 

The requirements for clarification of the identification of goods and the requirements for multiple-class applications are now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b).

 

requirement for clarification of Identification of goods

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Applicant proposed the following amended identification in International Class 021: “Bakeware; Barbecue mitts; beverageware; bowls; broilers and roasters; coasters ; coin banks; cookie cutters; cookie jars; cookware; cups; dinnerware; dishes; drinking straws; figurines made of porcelain; hair brushes; hair combs; hair combs and nail brushes; household and kitchen containers; household and kitchen utensils and food storage containers ; household containers for food and beverages; insulating sleeve holders for beverage containers; kettles; kitchen containers; lunch boxes; meal trays; meal trays; melamine bowls; metal and glass cooking pans; metal wastebaskets; mixing bowls; mixing cups; mugs; non-metallic trays for domestic purposes; oven mitts; plastic bottles sold empty; plastic placemats; plates and cups; pots and pans; servingware for serving food; soap cases and soap dishes; sports bottles sold empty; steamer baskets; tea sets; thermal insulated containers for food or beverages; toothbrush cases; toothbrushes and battery operated toothbrushes; vacuum bottles; vanity cases; vanity top sinks; wastebaskets; vanities and other goods in this class”.

 

The wording “vanity cases” and “other goods in this class” in the identification of goods is indefinite and must be clarified because the 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.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “vanities” in the identification of goods for International Class 021 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 bathroom vanities, which are furniture in Class 020.

 

Additionally, the goods identified as “meal trays” appear to be listed more than once, and the redundant identification should be deleted.

 

Applicant has classified “vanity top sinks” in International Class 021; however, the proper classification is International Class 011.  Therefore, applicant may respond by (1) adding International Class 011 to the application and reclassifying these goods in the proper international class, (2) deleting “vanity top sinks” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods 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.

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “bakeware, cookie cutters, cookware, hair brushes, hair brushes, hair combs, hair combs and nail brushes, household or kitchen utensils and containers, lunch boxes, meal trays, melamine bowls, metal and glass cooking pans, metal wastebaskets, mixing bowls, mixing cups, plastic bottles sold empty, plastic placemats, plates and cups, pots and pans, soap cases and soap dishes, steamers, thermal insulated containers for food or beverages, toothbrush cases, toothbrushes and battery operated toothbrushes, vacuum bottles, wastebaskets, containers, utensils, coin banks, dinnerware, cups, plates, tea sets, vanities and other goods in this class.”

 

However, the proposed amendment identifies the following goods (in addition to other goods):  “Barbecue mitts; beverageware; coasters; cookie jars; cookware; drinking straws; figurines made of porcelain; household and kitchen utensils; insulating sleeve holders for beverage containers; kettles; non-metallic trays for domestic purposes; oven mitts; servingware for serving food; sports bottles sold empty”.  

 

This portion of the proposed amendment is beyond the scope of the original identification because the proposed wording does not appear to tie-back to the original identification wording and/or does not containing limiting language that was included in the original identification.

 

Applicant may substitute the following wording, if accurate, for the entire identification of goods (additional or alternative wording is in bold font; notes to applicant about how to clarify the identification wording are contained within brackets, but the amended identification should not include this bracketed text): 

 

“Bakeware; beverageware being cups; bowls; broilers and roasters; coin banks; cookie cutters; cookie jars being household food storage containers; cookware being pots and pans; cups; dinnerware; dishes; hair brushes; hair combs; hair combs and nail brushes; household and kitchen containers; household and kitchen utensils, namely, ___ [specify goods, such as “graters”, “spatulas”], and food storage containers; household containers for food and beverages; kitchen containers; lunch boxes; meal trays; melamine bowls; metal and glass cooking pans; metal wastebaskets; mixing bowls; mixing cups; mugs; plastic bottles sold empty; plastic placemats; plates and cups; pots and pans; soap cases and soap dishes; plastic sports bottles sold empty; steamer baskets; tea sets; thermal insulated containers for food or beverages; toothbrush cases; toothbrushes and battery operated toothbrushes; vacuum bottles; fitted vanity cases; wastebaskets,” in International Class 021.

 

The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds , 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion , 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America , Inc ., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co ., 99 USPQ 344 (Comm'r Pats. 1953).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

REQUIREMENTS FOR MULTIPLE-CLASS APPLICATIONS

 

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 two classes; however, applicant submitted a fee(s) 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.

 

ADVISORY REGARDING CLAIMED PRIOR REGISTRATION IS CANCELLED

 

Applicant’s claim of ownership of U.S. Registration No. 1747848 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled.  Only claims of ownership of active registrations are printed.  See 37 C.F.R. §2.36; TMEP §812.

 

 

Response to final action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  “Barbecue mitts; beverageware; coasters; cookie jars; cookware; drinking straws; figurines made of porcelain; household and kitchen utensils; insulating sleeve holders for beverage containers; kettles; non-metallic trays for domestic purposes; oven mitts; servingware for serving food; sports bottles sold empty; vanity cases; vanity top sinks; vanities and other goods in this class”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods: “Bakeware; bowls; broilers and roasters; coin banks; cookie cutters; cups; dinnerware; dishes; hair brushes; hair combs; hair combs and nail brushes; household and kitchen containers; food storage containers; household containers for food and beverages; kitchen containers; lunch boxes; meal trays; melamine bowls; metal and glass cooking pans; metal wastebaskets; mixing bowls; mixing cups; mugs; plastic bottles sold empty; plastic placemats; plates and cups; pots and pans; soap cases and soap dishes; steamer baskets; tea sets; thermal insulated containers for food or beverages; toothbrush cases; toothbrushes and battery operated toothbrushes; vacuum bottles; wastebaskets”. 

 

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).

 

 

EMAIL/Telephone response suggested

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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.  

 

ADVISORY: APPLICATION REASSIGNED

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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.

 

MANDATORY ELECTRONIC FILING RULES ADVISORY

 

The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO.  See the Mandatory Electronic Filing Rules webpage for more information.

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/10/2018 FOR U.S. APPLICATION SERIAL NO. 87668719

 

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 7/10/2018 (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.