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: 12/19/2018

 

This application was approved for publication on November 5, 2018.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Partial Requirement  --  Identification of Goods

 

The wording “children’s play cosmetics,” “party favors in the nature of crackers or noisemakers and small toys,” and  “cases, skins or covers for handheld gaming devices” and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In the case of the “children’s play cosmetics,” the nature of the goods is not sufficiently clear.  In order for the goods to be classified in International Class 28, the identification must clearly indicate that the goods are toys.  This item was removed from the ID Manual prior to the applicant’s filing date as it was considered overly broad.

 

In the case of the “party favors in the nature of crackers or noisemakers and small toys,” and  “cases, skins or covers for handheld gaming devices,” the wording is indefinite as it uses the term “or.”  The term “or” is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Applicant may substitute the following wording, if accurate (changes in bold): 

 

“Action figure cases; action figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games; card games; toy imitation cosmetics; Christmas stockings; Christmas tree ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls and play environments sold therewith; doll cases; doll houses; dolls and accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw puzzles; jump ropes; kite parts; kites; miniature toy helmets; music box toys; musical toys; paddle ball games; parlor games; party favors in the nature of crackers and or noisemakers and small toys; pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys; puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards; slot machines; snow globes; sports balls; squishable toy figures; talking toys; toy airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy vehicles and accessories therefor; water-squirting toys; yo-yos; cases, skins and or covers for handheld gaming devices; paper party supplies, namely, paper party hats,” in International Class 28.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

Partial Abandonment

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: 

 

“children’s play cosmetics; party favors in the nature of crackers or noisemakers and small toys; cases, skins or covers for handheld gaming devices,” in International Class 28. 

 

The application will then proceed with the following goods only: 

 

Action figure cases; action figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games; card games; Christmas stockings; Christmas tree ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls and play environments sold therewith; doll cases; doll houses; dolls and accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw puzzles; jump ropes; kite parts; kites; miniature toy helmets; music box toys; musical toys; paddle ball games; parlor games;; pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys; puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards; slot machines; snow globes; sports balls; squishable toy figures; talking toys; toy airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy vehicles and accessories therefor; water-squirting toys; yo-yos; paper party supplies, namely, paper party hats,” in International Class 28. 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

TEAS RF Requirements

 

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.  

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

571-272-9177

Michael.Keating@uspto.gov (informal inquiries only)

 

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 12/19/2018 FOR U.S. APPLICATION SERIAL NO. 87765363

 

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 12/19/2018 (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.