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: 4/30/2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 12 April 2019.

 

In a previous Office action dated 18 October 2018, applicant was required to satisfy the following requirement: amend the identification of goods.

 

Further, the trademark examining attorney maintains the requirement in the summary of issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUE that applicant must address:

• Requirement – Amend Identification of Goods
• Advisory – Response Guidelines

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

The identification of goods 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 that have been deleted from registrations or in an affidavit of incontestability to indicate goods 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.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The wording “articles for cleaning purposes, namely, brushes, sponges” and “crystal, beverageware” in the identification of goods is indefinite and must be clarified because the specific type of cleaning brush and sponge, such as “floor brushes, kitchen sponges,” “crystal beverage ware,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate:

 

Class 21: Glassware, porcelain and earthenware for household purposes, namely, drinking vessels; articles for cleaning purposes, namely, [specify type appropriate for Class 21, such as “floor”] brushes, [specify type appropriate for Class 21, such as kitchen] sponges, brooms and mops; brush-making materials; combs and facial cleansing sponges; scrubbing brushes; household or kitchen utensils and containers not of precious metal or coated therewith, namely, containers for household or kitchen use; unworked or semi-worked glass, except building glass; bottles, sold empty; insulating bottles, namely, vacuum bottles; drying racks for washing; mixers, manual, namely, cocktail shakers; kitchen utensils, namely, mixing spoons; containers, namely, glass flasks; decorative boxes of non-precious metals; metal boxes for dispensing paper towels for household use; household containers for food and beverages; crystal beverage ware; coolers, namely, ice pails; decanters; bottle openers; statues of porcelain, terra-cotta or glass; clothes racks for drying; figurines and statuettes of porcelain, terra-cotta or glass; dental floss; cages for household pets; ice buckets; tankards; beer mugs; glass basins in the nature of receptacles; drinking glasses; gloves for household purposes; fruit presses, non-electric, for household use; feeding troughs for animals; fitted picnic baskets including dishes; waste paper baskets; combs; cutting boards for the kitchen; toothbrushes; hairbrushes; containers for household or kitchen use; non-electric portable coolers for food and drinks; coasters, not of paper or textile; decorative glass trays for domestic purposes; trays for domestic purposes; saucers; sugar bowls; cups; tea pots; corkscrews; kitchen utensils, namely, kitchen tongs, pouring and straining spouts, splatter screens; utensils for household purposes, namely pot and pan scrapers, rolling pins, spatulas, turners, whisks; commemorative plates

 

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 in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Advisory – Response Guidelines

 

Applicant must respond within six months of the date of issuance of this Office action or the following goods to which the requirement applies will be deleted from the application by Examiner’s Amendment: articles for cleaning purposes, namely, brushes, sponges; glass flasks (containers); crystal, beverageware; figurines (statuettes) of porcelain, terra-cotta or glass.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods:  Glassware, porcelain and earthenware for household purposes, namely, drinking vessels; articles for cleaning purposes, namely, brooms and mops; brush-making materials; combs and facial cleansing sponges; scrubbing brushes; household or kitchen utensils and containers not of precious metal or coated therewith, namely, containers for household or kitchen use; unworked or semi-worked glass, except building glass; bottles, sold empty; insulating bottles, namely, vacuum bottles; drying racks for washing; mixers, manual, namely, cocktail shakers; kitchen utensils, namely, mixing spoons; decorative boxes of non-precious metals; metal boxes for dispensing paper towels for household use; household containers for food and beverages; coolers, namely, ice pails; decanters; bottle openers; statues of porcelain, terra-cotta or glass; clothes racks for drying; dental floss; cages for household pets; ice buckets; tankards; beer mugs; glass basins in the nature of receptacles; drinking glasses; gloves for household purposes; fruit presses, non-electric, for household use; feeding troughs for animals; fitted picnic baskets including dishes; waste paper baskets; combs; cutting boards for the kitchen; toothbrushes; hairbrushes; containers for household or kitchen use; non-electric portable coolers for food and drinks; coasters, not of paper or textile; decorative glass trays for domestic purposes; trays for domestic purposes; saucers; sugar bowls; cups; tea pots; corkscrews; kitchen utensils, namely, kitchen tongs, pouring and straining spouts, splatter screens; utensils for household purposes, namely pot and pan scrapers, rolling pins, spatulas, turners, whisks; commemorative plates. 

 

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

 

(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).

 

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.  

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirement in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Joan Blazich/

Examining Attorney

Law Office 122

571-272-7810

joan.blazich@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 4/30/2019 FOR U.S. APPLICATION SERIAL NO. 88067357

 

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 4/30/2019 (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.