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: 10/11/2018

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) Refusal - Merely Descriptive
• Identification Of Goods And Services
• Multiple-Class Application Requirements
• Foreign Registration Required

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes the characteristics of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Applicant has applied for the mark FOOD HOLISTIC in standard characters for a wide range of goods and services in International Classes 5, 29, 30, 32, 33, and 43.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In this case, the term “FOOD HOLISTIC” describes a quality or characteristic of applicant’s goods. As shown in the attached dictionary definitions, “FOOD” means “any nutritious substance that people or animals eat or drink.” Everything listed in applicant’s identification of goods is considered “food” because everything in applicant’s identification of goods is a nutritious substance that people or animals eat or drink, or ingest for nutrition purposes. Moreover, the term “food” is also descriptive of all of applicant’s services because applicant’s services all relate to providing others with food or information related to food. Regarding the term “HOLISTIC”, the attached dictionary definitions show that the term “HOLISTIC” means “Concerned with wholes rather than analysis or separation into parts.” And, as shown by the attached evidence, third-parties commonly use the terms “food” and “holistic” together as the phrase “holistic food” to describe “nutritious substances that people or animals eat or drink that is part of a healthy diet that considers the individual as a whole including all aspects of his or her lifestyle.”

 

            Oxford Dictionary: http://en.oxforddictionaries.com/definition/us/food (food)

 

            Collins Dictionary: http://www.collinsdictionary.com/dictionary/english/food (food)

 

American Heritage Dictionary: http://www.ahdictionary.com/word/search.html?q=holistic (holistic)

 

            Merriam-Webster: http://www.merriam-webster.com/dictionary/holistic (holistic)

 

            Livestrong: http://www.livestrong.com/article/167813-definition-of-holistic-nutrition/

 

ECPI University: http://www.ecpi.edu/blog/meet-holistic-chef-new-breed-culinary-specialist

 

ECOR Holistic Food: http://www.ecorholisticfood.com/about/

 

            Jennifer Slater: http://www.jenslater.com/holistic-food-and-healing-nutrition/

 

            HOLO: http://holorganics.com/2017/09/07/holistic-food/

 

Thus, the term “holistic food, or “FOOD HOLISTIC” as in applicant’s mark, is a descriptive term for food, beverages, and supplements, like the food in applicant’s goods and services, that can be used as part of a healthy diet focused on an individual’s health and wellbeing as a whole. Of note, the transposition of the terms “holistic” and “food” in applicant’s mark does not change the meaning of the phrase “holistic food.” Therefore, the phrase “FOOD HOLISTIC” is merely descriptive of applicant’s goods and services and the mark is refused. 

 

ADVISORY – MARK APPEARS TO BE GENERIC

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods and services.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite or contains vague wording that requires clarifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

For the goods highlighted below, 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.

 

For the services highlighted below, applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording does not appear to describe any goods and/or services in the International Class specified in the application.  See TMEP §1904.02(c)(iii). Applicant may respond by amending the highlighted wording to clarify the nature of the goods and/or services; however, any amendment to the identification must be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 

 

Moreover, the identification of goods and 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 services.

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services are indefinite. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold italics print within brackets, for example, “Computer software for [specify the functions of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content – or field specific, the content or field of use].” In such those cases applicant must supply the required information within the brackets and remove the brackets from the identification.

 

Accordingly, applicant may adopt any or all of the following identification, if accurate (changes and additions in bold, comments in bold italics, deletions in strikethrough):

 

International Class 5: Dietary supplements for humans.

 

International Class 29:  Edible oils and fats; Milk products, namely, milk products excluding ice cream, ice milk and frozen yogurt; milk curd; Processed meat; Prepared meals consisting primarily of meat; Prepared meals consisting primarily of processed meat; Kits comprised of ingredients being primarily meat for cooking hot pot meat meals; Kits comprised of ingredients being primarily processed meat for cooking hot pot meat meals; Processed seafood; Prepared meals consisting primarily of seafood; Prepared meals consisting primarily of seaweed; Vegetable salads; Fruit salads; Other salads, namely, garden salads, legume salads, taco salad, potato salad, chicken salad; Jams; Peanut butter; Peanut spread; Processed vegetables and fruits; Prepared meals consisting primarily of vegetables; Prepared meals consisting primarily of fruits; Prepared meals consisting primarily of preserved pulses; Kits comprised of ingredients with the combination of meat and processed vegetables for hot pot cooking; Kits comprised of ingredients with the combination of processed meat products and processed vegetables for hot pot cooking; Fried tofu pieces (abura-age); Freeze-dried tofu pieces (kohri-dofu); Jelly made from devils' tongue root (konnyaku); Soya milk; Tofu; Egg tofu (tamago dofu); Sesame dofu, namely, crushed sesame seeds boiled in water and chilled like tofu (goma dofu), not for use as seasonings; Walnut dofu, namely, a custard-like yogurt dish made of ground walnuts; Peanut dofu, namely, a custard-like yogurt dish made of ground peanuts; Fermented soybeans (natto); Soy pulp, namely, okara; Tofu skin; Prepared meals consisting primarily of fried tofu pieces (abura-age); Prepared meals consisting primarily of tofu; Prepared meals consisting primarily of jelly made from devils' tongue root (konnyaku); Prepared meals consisting primarily of soy pulp in the nature of okara; Prepared meals consisting primarily of fermented soybeans (natto); Pre-cooked curry stew, stew and soup mixes; Stew; Soups; Mixes for making soup for hot pot dishes; Soups for hot pot dishes; Mixes for gomoku-zushi (a style of sushi where ingredients mixed in the body of rice) [moved to International Class 30]; Mixes for chirashi-zushi (a style of sushi where the topping is placed on a bed of rice, in a bowl) [moved to International Class 30]; Mixes for Chinese congee [moved to International Class 30]; Mixes for Kamameshi (rice, meat, and vegetables boiled together in a small kama) [moved to International Class 30]; Mixes for Maze gohan (Japanese style pilaf) [moved to International Class 30]; Mixes for making hot pot dishes composed primarily of meat; Mixes for making instant or pre-cooked miso soup; Instant miso soup; pre-cooked miso soup; Frozen vegetables; Frozen fruits; Processed eggs; Dried flakes of laver for sprinkling on rice in hot water (ochazuke- nori); dried flakes of fish, meat, vegetables or seaweed (Furi-kake) for onigiri (rice balls); dried flakes of fish, meat, vegetables or seaweed (furi-kake); Side-dish made of fermented soybean (Name-mono); Preserved pulses; Protein for human consumption, namely, soya bean paste with added protein, quinoa-based food bars with added protein, grain-based food bars with added protein, Japanese arrowroot powder (kudzu-ko, for food) [moved to International Class 30]; Margarine; Butter; Cream; Milk beverages, milk predominating; Fish, preserved; Meat, preserved; Blocks of boiled, smokied and then dried bonitos (Katsuobushi); Dried pieces of agar jelly (Kanten); Flakes of dried fish meat (Kezuri-bushi); Fish meal for human consumption; Edible shavings of dried kelp (Tororo-kombu); Sheets of dried laver (Hoshi-nori); Dried brown algae (Hoshi-hijiki); Dried edible seaweed (Hoshiwakame); Toasted sheets of laver (Yaki-nori); Pickled fruits; Dried fruits; Dried vegetables; Dried beans; Vegetable juices for cooking; Marmalade; Pickled vegetables; Nuts, prepared; Fruit spread; Vegetable-based spread; Bean spread; Nut-based spread; Freeze-dried vegetables; Freeze-dried fruits; Freeze-dried beans; Tomato puree; Tomato paste; Vegetable puree; Vegetable paste; Fruit puree; Pressed fruit paste; Bean puree; Bean paste; [specify type of nut in Class 29, e.g., peanut] puree; [specify type of nut in Class 29, e.g., peanut] paste; Fruit, preserved; Vegetables, preserved; Beans, preserved; Nut, preserved; Ready-made mix consisting primarily of fish and/or vegetables with other added ingredients, namely, rice and prepared vegetables, all for use in making gomuku chirashi sushi; Edible seaweed, namely, dried flakes of laver for sprinkling on rice in hot water (ochazuke-nori); Broth; Bouillon; Powdered soup stock, namely, mixes for making soup; Preparations for making soup; Soup mixes; Hot pot soup; Broth used for cooking ingredients in a hot pot; Broth concentrates; Bouillon concentrates; Frozen vegetables, namely, frozen peppers; Processed foods made from seaweed, namely, seaweed paste, powdered seaweed; Pickles; Sweet pickles; Spreads based on milk products, namely, cheese spread, caramel spread [moved to International Class 30]; Chili pepper jelly; Processed chili pepper; Canned chili pepper; Chili pepper puree; Ready-made mix consisting primarily of fish and/or vegetables with other added ingredients, namely, [specify other added ingredients], and seasoned with sugar, salt, vinegar, and/or other seasonings, namely, [specify other seasonings], for making rice dishes; Soup stock; Ready-made seasoned mix consisting primarily of fish and/or vegetables with other added ingredients, namely, [specify other added ingredients], and seasoned with sugar, salt, vinegar, and/or other seasonings, namely, [specify other seasonings] for making rice dishes; Ready-made mix consisting primarily of meat, seafood or vegetables seasoned with soy sauce and/or with other seasonings, namely, [specify other seasonings] for making rice dishes; Dried flakes of fish, meat, vegetables or seaweed and/or other ingredients for rice balls; Dried flakes of fish, meat, vegetables or seaweed and/or other ingredients for cooked rice with hot water (ochazuke-no-moto); Potato chips

 

International Class 30: Confectionery, namely, baked confectionery in the nature of brownies, muffins, scones, cookies, cakes; dessert pudding; frozen confectionery; bread and buns; Sandwiches; Steamed buns stuffed with minced meat (Chuka-manjuh); Hamburger sandwiches; Pizzas; Hot dogs sandwiches; Meat pies; Vinegar; Sushi vinegar; Powdered sushi vinegar; Seasonings for sushi, namely, sauce for sushi, seasoning for rice for sushi; Seasoning vinegar; soy sauce containing citrus juice or vinegar (ponzu); Seasoned soy sauce; Seasoning mixes for soup broth; Seasoning for noodles; Marinades; Seasoning for hot pot dishes; Seasoning for hot boiled dishes; Seasoning for stewed cooking; Seasoning for pickles; Sauces for hot pot dishes; Sauces for rice bowl dishes (donburi); Mirin being Japanese Shochu-based mixed liquor-like seasoning [moved to International Class 33]; Seasoning using seasoning wine for culinary purposes [moved to International Class 33]; Seasoning using seasoning sake for culinary purposes [moved to International Class 33]; Seasoning using seasoning western liquors in general for culinary purposes [moved to International Class 33]; Seasoning using seasoning Chinese liquors in general for culinary purposes [moved to International Class 33]; Seasoning, namely, [specify type of syrup in Class 30, e.g., golden syrup, corn syrup, glutinous starch syrup]; Spices; Processed grains; Chinese stuffed dumplings (gyoza, cooked); Chinese steamed dumplings (shumai, cooked); Sushi; Fried balls of batter mix with small pieces of octopus (Takoyaki); Prepared boxed lunch of rice, with added meat, fish or vegetables; Ravioli; Onigiri (rice balls); Cooked rice; Steamed rice with red beans; Okowa (steamed glutinous rice); Prepared gruel of oatmeal or rice; Prepared rice gruel (zosui); Prepared boiled rice seasoned with soy sauce and mixed with meat or seafood and savory vegetables (takikomi-gohan); Prepared rice, meat, and vegetables boiled together in a small kama cooking pot (kamameshi); Prepared pilaf; Prepared yakimeshi (fried rice); Noodle based prepared meals; Prepared meals consisting primarily of rice with curry; Prepared donburi (rice bowl dishes); Prepared meals consisting primarily of wheat, barley, rice or corn; Instant confectionery mixes, namely, instant pudding mixes, instant doughnut mixes, instant pancake mixes; Pasta sauce; Tea; Coffee; Cocoa (roasted, powdered, granulated, or in drinks); Ice cream mixes; Sherbet mixes; Chocolate spread; Gluten additives for culinary purposes; Flour; Prepared coffee and coffee-based beverages; Prepared cocoa and cocoa-based beverages; Sauces; Seasoning; Dipping sauce; Salad dressings; Soya bean paste; Mayonnaise; Chutneys; Tomato sauce; Sugar; Honey; Cooking salt; Roasted and ground sesame seeds for use as seasonings; Umami seasonings; Preparations made from wheat, barley, rice, or corn, namely, cereal paste, cereal spread, corn paste, corn spread, corn bar in the nature of [specify common commercial name of corn bar]; Cereal bars; Noodles; Almond paste; Piccalilli; Fruit coulis; Relish; Japanese arrowroot starch noodles (kuzukiri); Flavorings, other than essential oils, for beverages, cakes, cheeses, soups, butter; Powdered sauce mix, namely, powdered salad dressing; Gelled sauce, namely, gelled salad dressing; Wine reduction sauce for cooking [moved to International Class 32]; Spirit reduction sauce for cooking [moved to International Class 32]; Browning sauce for cooking; Seasoning mixes; Sauce; Powdered sauce base; Flavorings, other than essential oils, for hot pot dishes (nabemono); Basting sauce; Sesame sauce; Powdered sushi seasoning mixes; Seasoned vinegar; Citrus seasoned soy sauce (ponzu); Ponzu citrus seasoning; Soy sauce; Ketchup; Salad dressings containing cream; Mustard; Seasoning in the nature of wine powder; Sweet seasoning; Fermented seasonings; Citrus seasoning; Dried starch noodles (harusame); Glass noodles; Seasoning for cooked rice with hot water (seasoning mixes for ochazuke); Seasonings containing collagen for hot soup dishes; Ice cream, ice milk, and frozen yogurt; Prepared curry, namely, curry pastes, curry sauce, curry as a spice mixture only, curry powder; Mixes for making gomoku-zushi; Mixes for making chirashi-zushi; Mixes for making Chinese congee; Mixes for making Kamameshi; Mixes for making Maze gohan; Protein for human consumption, namely, soya bean paste with added protein, quinoa-based food bars with added protein, grain-based food bars with added protein, Japanese arrowroot powder for food (kudzu-ko); Spreads based on milk products, namely, caramel spread.

 

International Class 32: Beer; Soft drinks; Fruit drinks; Vegetable juices; Extracts of hops for making beer; Whey beverages; Carbonated non-alcoholic drinks; Non-alcoholic beverages, namely, non-alcoholic water-based beverages, non-alcoholic beverages flavored with tea; Non-alcoholic fruit juice beverages; Vinegar-based soft drinks; Wine reduction sauce for cooking in the nature of de-alcoholized wine; Spirit reduction sauce for cooking in the nature of de-alcoholized liquors.

 

International Class 33: distilled rice spirits (awamori); Japanese white liquor (Shochu); Japanese sweet rice-based mixed liquor (Shiro-zake); Sake; Japanese regenerated liquor (naoshi); Japanese Shochu-based mixed liquor (Mirin); Western liquors namely, vodka, rum, whiskey; Alcoholic fruit beverages; Wine; Cooking wine; Chinese brewed, white, mixed liquors; Flavored liquors; Distilled alcoholic liquor; Seasoning in the nature of wine for seasoning for culinary purposes; Seasoning in the nature of sake for seasoning for culinary purposes; Seasoning in the nature of western liquors for seasoning for culinary purposes, namely, [specify type of liquors]; Seasoning in the nature of Chinese liquors for seasoning for culinary purposes, namely, [specify type of liquors].

 

International Class 35: Providing information in the field of foods and beverages, namely, consumer product information relating to food or drink products.

 

International Class 40: Providing information in the field of foods and beverages, namely, information on food and beverage manufacturing.

 

International Class 43: Providing foods and beverages; Providing information about foods and beverages [moved to International Classes 35, 40, and 44, or see following International Class 43 suggestion]; Providing information about foods and beverages, namely, providing information about recipes and cooking; Providing information about food service, namely, providing reviews of restaurants; Food service, namely, food preparation services, fast-food restaurant services, take out food services, contract food services; Restaurant service.

 

International Class 44: Providing information in the field of foods and beverages, namely, nutritional information about food and beverages.

 

Applicant’s goods and 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 services or add goods and 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services that are classified in at least 9 classes; however, applicant submitted a fee sufficient for only 6 classes.  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 services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted fees sufficient for only 6 classes.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

RESPONSE GUIDELINES

 

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.  

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Robert Ratcliffe/

Examining Attorney        

Law Office 109

Phone: (571) 272-5257

Fax: (571) 273-5562

robert.ratcliffe@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 10/11/2018 FOR U.S. APPLICATION SERIAL NO. 88000299

 

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 10/11/2018 (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.