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: 11/5/2018

 

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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:

• Identification of Goods
• Unsigned Application

 

IDENTIFICATION OF GOODS

 

The wording “chargers” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., battery chargers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Moreover, the wording “electronic vaporizers” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., electronic vaporizers for household purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, the wording “apparatus for heating liquids” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., heating boilers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, the wording “apparatus for generating vapour” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., power-operated vaporizers for industrial or commercial purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Moreover, the wording “Wired vaporizer for electronic cigarettes and electronic smoking devices” in the identification of goods is indefinite and must be clarified to specify the types of goods intended, e.g., oral vaporizers for smoking purposes, electronic cigarettes, and electronic smoking pipes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, the wording “kretek” and “snus” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., kretek in the nature of tobacco; snus in the nature of tobacco.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, the wording “pipes, pocket apparatus for rolling cigarettes, lighters” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., smoking pipes, pocket apparatus for rolling cigarettes and lighters for smokers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Moreover, the wording “tobacco sticks” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., pipe tobacco.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, the wording “tobacco products for the purpose of being heated” in the identification of goods is indefinite and must be clarified to specify the types of goods intended, e.g., tobacco products, namely, hookah tobacco and tobacco powder for the purpose of being heated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, the wording “electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation” in the identification of goods is indefinite and must be clarified to specify the types of goods intended, e.g., electronic smoking pipes, electronic hookahs, smokers’ mouthpieces for electronic cigarettes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Moreover, the wording “electronic smoking devices”, “electronic devices for the inhalation of nicotine containing aerosol”, “oral vaporising devices for smokers, tobacco and tobacco substitutes” and “smoker's articles for electronic cigarettes” in the identification of goods is indefinite and must be clarified to specify the types of goods intended, e.g., electronic smoking devices, namely, electronic cigars; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol, namely, electronic cigarettes; oral vaporising devices for smokers, tobacco and tobacco substitutes; smoker's articles, namely, smokers’ mouthpieces for electronic cigarettes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, the wording “parts and fittings for the aforesaid products” in the identification of goods is indefinite and must be clarified to specify the intended products, e.g., combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, the wording “devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., metal pocket-sized receptacles with lids for cigarette butts.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Moreover, 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 and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and 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.

 

Last, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant may substitute the following wording, if accurate (changes shown in bold; instructions in curly brackets {}): 

 

International Class 9:

 

Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB battery chargers for electronic devices that are used for heating tobacco; car battery chargers for electronic cigarettes; car battery chargers for devices that are used for heating tobacco; battery chargers for electronic cigarettes

 

International Class 11:

 

Electronic vaporizers for household purposes except electronic cigarettes; apparatus for heating liquids, namely, heating boilers; apparatus for generating vapour, namely, power-operated vaporizers for industrial or commercial purposes

 

International Class 34:

 

Wired vaporizer for electronic cigarettes and electronic smoking devices in the nature of oral vaporizers for smoking purposes, electronic cigarettes, and electronic smoking pipes; tobacco, raw or manufactured; tobacco products, namely, cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek in the nature of tobacco; snus in the nature of tobacco; tobacco substitutes not for medical purposes; smokers' articles, namely, cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, smoking pipes, pocket apparatus for rolling cigarettes and lighters for smokers; matches; tobacco sticks in the nature of pipe tobacco; tobacco products, namely, hookah tobacco and tobacco powder for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, namely, electronic smoking pipes, electronic hookahs, smokers’ mouthpieces for electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices, namely, electronic cigars; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol, namely, electronic cigarettes; oral vaporising devices for smokers, tobacco and tobacco substitutes; smoker's articles, namely, smokers’ mouthpieces for electronic cigarettes; parts and fittings for the aforesaid products in the nature of {specify the Class 34 goods intended, e.g., cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes}; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks, namely, metal pocket-sized receptacles with lids for cigarette butts; electronic rechargeable cigarette cases

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

UNSIGNED APPLICATION

 

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. 

 

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 refusal(s) and/or requirement(s) 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. 

 

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.  

 

 

 

/Melissa Sturman/

Melissa Sturman

Trademark Examining Attorney

Law Office 125

(571) 272-2781

melissa.sturman@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 11/5/2018 FOR U.S. APPLICATION SERIAL NO. 88069707

 

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 11/5/2018 (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.