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: 11/8/2018

 

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.

 

SEARCH RESULTS

 

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).

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Anything in bold requires deletion, clarification or reclassification. 

 

Class 9:  Acceptable as submitted.

 

Class 14:  Jewellery and imitation jewellery; watches and clocks; watch bands; watch boxes; jewellery boxes; tie clips; key rings; key chains; key fobs of common metal; key fobs of leather; key fobs of imitation leather; key fobs of precious metals; ornamental pins; statues of precious metals

 

Ornamental pins is overbroad and requires clarification.  Ornamental label pins is acceptable in Class 14.

 

Class 18:  Acceptable as submitted.

 

Class 20:  Folding chairs; decorative pillows; pillows; inflatable pillows; picture frames; Mirrors; Ornaments not of metal; Statues not of metal; Picture frames not of metal; Bar stools, chairs, sofas, ottomans, coffee tables, side tables, bed frames, living room furniture, bedroom furniture, dining room furniture, kitchen furniture; outdoor patio furniture; home furnishings

 

Ornaments not of metal is unclear and requires further clarification. Ornaments of acrylic resins is acceptable in Class 20.  Although Christmas tree ornaments are generally classified in Class 28, decorative ornaments are generally classified according to material composition. Ornaments of acrylic resins are classified in Class 20 because acrylic resins are similar to plastics. Ornaments of acrylic fabrics are also classified in Class 20.  Ornaments of {specify china, crystal, glass, porcelain, terra cotta} [NOT including Christmas tree ornaments] is also acceptable in Class 20.

 

Class 21:  Drink coasters; mugs; travel mugs; drinking glasses; cocktail glasses; beer glasses; beer steins; wine glasses; shooter glasses; champagne flutes; martini glasses; drinking flasks; goblets; water bottles; vacuum bottles; bottle openers; corkscrews; ice buckets; cocktail shakers; pitchers; decanters; glass carafes; Thermal insulated containers and bags for food; thermal insulated bags for beverages; cooler bags; insulating sleeve holder for beverage cups; Cookie cutters; cookie jars; oven mitts; cooking utensils; cookware and bakeware; dinnerware; china dinnerware; bowls; plates; serving dishes; picnic baskets; serving trays; napkin rings; candlesticks; incense burners; candle holders; vases; ashtrays; hair brushes; paint brushes

 

Cooking utensils and cookware must specify the name of each item by common commercial name.

 

Class 25: Casual clothing; dress clothing; t-shirts; shirts; sweatshirts; hooded sweatshirts; tank tops; jackets; lab coats; headwear, namely, hats, caps, visors and toques; dresses; skirts; sweatpants; pants; undergarments; scarves; belts; gloves; outdoor winter clothing; sweaters; coats; shorts; aprons; socks; mittens; shoes; underwear; bath robes; pajamas; slippers; tights; athletic tights; athletic clothing; loungewear; sleepwear

 

Applicant must specify what the clothing items are by common commercial name.

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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.

 

APPLICATION DECLARATION UNSIGNED AND UNDATED

 

TEAS instructions for providing a declaration.  Open the TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  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, the 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.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  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).

 

 

 

 

 

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.  

 

 

 

/Jacqueline Abrams/

Trademark Examining Attorney

Law Office 101

571-272-9185

INFORMAL ONLY jacky.abrams@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.