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: 10/24/2018

 

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.

 

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).

 

SUMMARY OF ISSUES

 

-        Amendment of Identification of Goods and Services Required

-        Multiple-Class Application Requirements

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services contains indefinite and overly broad wording that must be clarified and properly classified. TMEP §1402.01. 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

In numerous instances, the wording in the identification of goods and services does not meet the Office’s requirements for specificity and the nature of the goods and services is not clear. 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 and services. 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. 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.  Please see below for further explanation and underlined, italicized, and bolded suggested amendments.

 

Further, 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.

 

Applicant must clarify the wording “cattying” because it appears to be misspelled and is thus indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “carrying.”

 

Applicant must clarify the wording “pouches,” “pouches for water flask,” “pouches for feeding bottle,” and “net bags” because it is indefinite and overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording could identify goods in more than one international class.  For example, pouches made out of cloth and net bags for shopping are properly classified in International Class 18; however, beverage pouches made of flexible foil are properly classified in International 6, pouches especially adapted for holding pacifiers and pouches for feeding bottles in the nature of disposable baby bottle liners are properly classified in International Class 10, recyclable flexible plastic pouches sold empty for holding water are properly classified in International Class 21, and net bags being mesh bags for washing laundry are properly classified in International Class 22.

 

Applicant must clarify the wording “tuition” because it is indefinite and, as such, appears to be misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The wording is indefinite because it does not make clear the services being provided by the applicant.  If applicant intends to provide educational scholarships to cover tuition, those services are properly classified in International Class 36.

 

Suggested Amendments

 

Applicant may adopt the following suggested amendments, if accurate:

 

            Class 6:  Beverage pouch made of flexible foil; Pouch for holding water made of flexible foil

 

            Class 10:  Pouches especially adapted for holding pacifiers; Pouches for feeding bottles in the nature of disposable baby bottle liners

 

            Class 18:  Reins for guiding children; Sling bags for carrying infants; Rucksacks; Vanity cases, non-fitted; Slings for carrying infants; Pouch baby carriers; Leather shoulder belts; Pouches made out of cloth; Pouches made out of cloth for holding water flasks; Pouches made out of cloth for holding feeding bottles; Net bags for shopping; Baby carriers worn on the body in the nature of waist pouch type straps; Mother’s bags being diaper bags

 

            Class 21:  Recyclable flexible plastic pouches sold empty for holding water

 

            Class 22:  Net bags being mesh bags for washing laundry

 

            Class 35:  Outdoor advertising; Dissemination of advertising matter; Direct mail advertising; Distribution of samples; Advertising; Shop window dressing; Modelling for advertising or sales promotion; Rental of advertising space; On-line advertising on a computer network; Advertising planning; Professional business consultancy; Marketing research; Providing business information via a website; Bidding quotation; Auctioneering; Import-export agencies; Sales promotion for third parties; Procurement services, namely, procuring of contracts for others for the purchase of goods and services; Marketing services; Personnel recruitment; Relocation services for businesses; Document reproduction; Computerized file management; Administrative processing of purchase orders; Data processing services in the nature of database input services; Financial auditing; Rental of vending machines; Sponsorship search; Retail and wholesale store services featuring pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail and wholesale store services featuring medicines; Retail and wholesale store services featuring pharmaceutical preparations; Retail and wholesale store services featuring sanitary preparations; Retail and wholesale store services featuring medical supplies; Retail and wholesale store services featuring medicines for veterinary purposes; Retail and wholesale store services featuring veterinary products

 

            Class 36:  Providing educational scholarships to cover tuition

 

            Class 38:  Radio broadcasting; Television broadcasting; Providing on-line forums for transmission of messages among computer users; Telecommunication services, namely, electronic bulletin board services; Electronic message sending; Providing internet chatrooms; Providing access to databases

 

            Class 41:  Providing online newsletters in the field of breastfeeding via e-mail; Education services in the nature of early childhood instruction; Education services, namely, conducting programs in the field of implementation; Vocational education in the field of {indicate specific field of education, e.g., mechanics, computers, etc.}; Professing of knowledge being teaching in the field of art; Providing education in the field of {indicate specific field of education, e.g., art, science, etc.} rendered through correspondence courses; Physical education; Teaching in the field of {indicate specific field, e.g., music, remedial reading, etc.}; Providing information relating to education services; Educational examination; Entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Organization of exhibitions for cultural or education purposes; Arranging and conducting educational conferences in the nature of symposiums; Arranging professional workshop and training courses; Conducting workshops and training courses in the field of {indicate specific field, e.g., self-awareness, art appreciation}; Lending library services; Bookmobile services; Book publishing; Online electronic publishing of books and journals; Providing a website featuring non-downloadable publications in the nature of {indicate specific nature of publication, e.g., books, magazines, brochures, etc.} in the field of {indicate subject matter of the publication}; Production of radio and television programmes; Translation; Sign language interpretation; Planning arrangement of showing musical performances; Amusement park services; Providing recreation facilities; Dance club services for education or entertainment purposes; Entertainment information; Gymnastic instruction; Providing sports facilities; Health club for physical exercise; Toy rental; Games equipment rental; Animal training

 

            Class 42:  Scientific research in the field of breastfeeding and childcare; Providing a website featuring technology that enables users to share, bookmark, index, store, collect and showcase content, articles, images, calendars, products, projects, and other information resources in electronic form in the nature and field of childcare information; Application services provider, namely, hosting applications in the field of parenting for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Conducting scientific feasibility studies through technical projects; Quality control of goods and services; Chemistry consultation; Cosmetics research; Bacteriological research; Material testing; Textile testing; Vehicle roadworthiness testing; Industrial design; Packaging design; Industrial design services in the nature of styling; Design of interior décor; Dress designing; Computer programing; Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; Electronic data storage; Providing information on computer technology and programming via a web site; Computer services, namely, cloud hosting provider services

 

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.  See TMEP §1402.04.

 

MULTIPLE-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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least ten classes; however, applicant submitted a fee sufficient for only five 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.

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

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.  

 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Trademark Examining Attorney

Law Office 108

Phone: (571)270-1941

anna.burdecki@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 10/24/2018 FOR U.S. APPLICATION SERIAL NO. 88021003

 

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 10/24/2018 (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.