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: 12/6/2018

 

 

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:

• Search Deferred
• Identification of goods and services
• Multiple Class Requirements

 

 

SEARCH DEFERRED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

IDENTIFICATION/CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services provided is unacceptable because several items are indefinite or too broad, and several items are misclassified.  Specifically, the identification must be clarified in the following ways.

 

In the identification of goods listed in International Class 18, the wording “disposable bags for pet waste” is indefinite.  While the disposable nature of these bags renders the likely materials of these bags limited, specification of that material is required for proper classification, as plastic or paper bags for this purpose are classified in Class 16, whilst other materials, such as  textile or metal (foil) bags of the same type, would be classified in other classes.  The wording “pet tags for leashes or collars” is too broad, as this wording would include both pet tags that are specially adapted for attachment to pet leashes or collars (Class 18 goods) and pet tags that may be used with, but are not specially adapted for pet leashes and collars (Class 6 goods if metal, Class 20 if not).  The wording “pet wipes” is unacceptable as too broad.  Applicant must more further specify the nature of these wipes, as various types of wipes are classified in different classes (pet wipes impregnated with a cleaning preparation are classified in Class 3, while pre-moistened medicated pet wipes are Class 5 goods, disposable pet wipes not impregnated with chemicals or compounds are Class 16 goods, and finally, pet wipes made of cloth are classified in Class 21.

 

In the identification of services listed in Class 35, the wording “online retail services featuring pet products and accessories” is too broad because it does not specify the particular retail services offered.  This wording could include online retail store services in Class 35, or the hosting of online retail storefront websites in Class 42.  The wording “Kennel services boarding for pets” must be clarified because it is not apparent whether the “boarding for pets” portion is meant to modify the kennel services language.  While kennel services in the nature of pet boarding is an acceptable service (albeit classified in Class 43, not Class 35), without a clear modifier, “kennel services” is too broad, as it includes kennel services in the nature of dog training (Class 41) and kennel services in the nature of animal breeding (Class 44).  Finally, the wording “grooming services” is indefinite, inasmuch as applicant must specify what is being groomed, e.g., pets, humans, lawns, and classify these services in Class 44.

 

The wording “TOTES” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration Nos. 1315771 and 1138767.  Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).  Applicant may replace such wording with the following, if appropriate:  “tote bags.”

 

Additionally, applicant has incorrectly classified the following goods in International Class 18: 

 

Grooming products for pets, namely, pet shampoos;

Pet conditioners;

Clickers for training dogs;

Dog whistles;

Plastic bags for pet waste disposal;

Beds for household pets;

Kennels for household pets;

Portable beds for pets;

Crates and cages for pets;

            Scratching posts;

Cat towers;

Pet furniture;

Grooming tools for pets, namely, combs and brushes;

Pet drinking and feeding bowls;

Travel water containers for pets;

Scoops for the disposal of pet waste;

Pet litter boxes;

Pet litter box liners;

Pet toys;

Baskets to store pet toys;

Crates to store pet toys;

Edible pet treats;

 

However, the proper classification for each item is as follows: 

 

Class 3:            Grooming products for pets, namely, pet shampoos; pet conditioners;

 

Class 9:            Clickers for training dogs; dog whistles;

 

Class 16:          Plastic bags for pet waste disposal;

 

Class 20:          Beds for household pets; kennels for household pets; portable beds for pets; crates for pets; scratching posts; cat towers; pet furniture; crates to store pet toys;

 

Class 21:          Cages for pets; Grooming tools for pets, namely, combs and brushes; pet drinking and feeding bowls; travel water containers for pets; scoops for the disposal of pet waste; pet litter boxes; pet litter box liners; Baskets to store pet toys;

 

Class 28:          Pet toys;

 

Class 31:          Edible pet treats.

 

Also, applicant has incorrectly classified the following acceptably-worded services in International Class 35:  “Pet training services; day care for pets.”  However, the proper classification for each item is as follows:

 

Class 41:          Pet training services;

 

Class 43:          Day care for pets.         

 

Applicant has provided the application fees for only two international classes.  Thus, not all international classes in the application are covered by the application fees.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified below in this Office action.

 

Applicant may adopt any or all of the following suggested identifications:

 

Class 3:            Grooming products for pets, namely, pet shampoos; pet conditioners; pet wipes impregnated with a cleaning preparation;

 

Class 5:            Pre-moistened medicated pet wipes;

 

Class 6:            Metal pet tags for leashes or collars;

 

Class 9:            Clickers for training dogs; dog whistles;

 

Class 16:          Disposable plastic bags for pet waste; disposable pet wipes not impregnated with chemicals or compounds; Plastic bags for pet waste disposal;

 

Class 18:          Pet products and accessories, namely, restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices; animal leashes; leather leads; muzzles; pet tags specially adapted for attachment to leashes or collars; backpacks for pets; bags for carrying pets; pet tote bags; pet clothing; jackets for pets; pet booties; pet bandanas and kerchiefs; pet accessories, namely, specially designed canvas, vinyl or leather bags attached to animal leashes for holding small items such as keys, credit cards, money or disposable bags for disposing of pet waste; travel cases for pets;

 

Class 20:          Non-metal pet tags for leashes or collars; Crates for pets; scratching posts; cat towers; pet furniture; crates to store pet toys;

 

Class 21:          Pet wipes made of cloth; Cages for pets; Grooming tools for pets, namely, combs and brushes; travel water containers for pets; scoops for the disposal of pet waste; pet litter boxes; pet litter box liners; baskets to store pet toys;

 

Class 28:          Pet toys;

 

Class 31:          Edible pet treats;

 

Class 35:          Retail store services and online retail store services featuring pet products and accessories;

 

Class 41:          Pet training services;

 

Class 43:          Kennel services in the nature of boarding for pets; day care for pets;

 

Class 44:          Animal grooming services.

 

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

 

Applicant should also note the following advisory.

 

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.  

 

 

 

/mfp/

Mark Pilaro

Managing Attorney

Law Office 127

571-270-1513

mark.pilaro@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 12/6/2018 FOR U.S. APPLICATION SERIAL NO. 88075616

 

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 12/6/2018 (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.