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

 

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.  

 

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 of Office Records

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 and Services

The identification of goods and services is indefinite and must be clarified because additional information regarding applicant’s goods and services is required for classification purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, the identified goods and services are properly classified in at least eight International Classes.  If applicant chooses to add a class to the application, then applicant must comply with the requirements for combined applications, as outlined below.  Applicant may adopt the following identification, if accurate: 

 

Electronic machines and apparatus used for cultivation of horticulture and agricultural crops, namely, cultivators, in International Class 7.

 

Measurement apparatus, namely, electric sensors, other than for medical use; Measuring or testing machines and instruments, namely, level measuring machines; Telecommunication machines and apparatus, namely, telecommunication cables; Electronic machines, apparatus and their parts, namely, electronic control systems for machines; Surveillance cameras; anti-intrusion alarms; Electric or magnetic meters and testers, namely, acoustic meters and battery testers; Power distribution or control machines and apparatus, namely, electrical power distribution blocks; Electric wires and cables; Smartphones; Personal digital assistants; Thermo-hygrometer; electronic soil moisture measuring sensor; in International Class 9.

 

Providing business management information relating to farm management via telecommunication; Business analysis, business advisory and business consultancy relating to farm management via telecommunication; Business advisory and business consultancy in the field of agriculture via telecommunication; Business analysis, business advisory and business consultancy relating to farm management; Business advisory and business consultancy in the field of agriculture; Business management analysis, business advisory or business consultancy; Retail store services or wholesale store services featuring foods and beverages; business administration assistance and business consultancy services relating to retail business; Advertising; Publicity consultation; Marketing; providing office functions; Accounting services; Systemization and compilation of information into computer databases and consultancy or advisory thereof and providing information thereto; Data processing services featuring Information relating to weather, soil and vermin by computer; Data processing services with computer; in International Class 35.

 

Maintenance of computer network systems; technical support services, namely, troubleshooting in the nature of the repair of computer hardware; in International Class 37.

 

Telecommunication other than broadcasting, namely, telecommunication access services; Providing access to communication networks and providing information thereof; Broadcasting; News agencies; Rental of telecommunication equipment including telephones and facsimile apparatus; Communication by mobile phones, telexes, computer terminals, telegrams, telephones or facsimiles; Providing access to the Internet by providers; Internet access provider services; Rental of access time to global computer networks; in International Class 38.

 

Organization of exhibitions for cultural or educational purposes featuring materials relating to agriculture and manufacture of farm products; Education services, namely, providing courses of Instruction relating to agriculture or horticulture; Publication of books; Publication of printed matter in electronic form; Education services, namely, providing courses of instruction relating to arts, crafts, sports or general knowledge; education services, namely, organizing, conducting and arranging seminars, symposium, conference, lecture meeting, training workshop, study group, debate session, group debate session, meeting, gathering and workshop relating to agriculture and providing information related thereto; Publishing of electronic publications; Providing a web site featuring non-downloadable instructional videos and images relating to agriculture via the Internet or computer networks; Publication of manuals for operation of computers and use of computer program; in International Class 41.

 

 

Providing meteorological information; Agricultural research and providing information thereto; agricultural research of agricultural soil and providing information related thereto; agricultural research of farm products and providing information related thereto; Providing information technology information in the field of agriculture technology; Research relating to environmental protection in the field of natural environment and conservation of natural environment and providing information related thereto; Computer software design, computer programming, or maintenance of computer software; Creating and maintaining web sites for others; Design and planning of computer network system for others; Research services in the field of telecommunications technology; Rental of computers; Providing computer programs on data networks, namely, providing temporary use of on-line non-downloadable software for use in database management; Rental of memory space on servers and providing information related thereto; Rental of computers for measuring or testing; Design of electronic machines and telecommunications apparatus;  Providing meteorological information via the Internet or computer networks; Providing computer programs relating to agriculture and horticulture on data networks, namely, providing temporary use of on-line non-downloadable software for use in database management; Agricultural research and providing information relating thereto related to agriculture, livestock breeding or fisheries via the Internet; agricultural research related to agriculture, livestock breeding or forestry and providing advisory, consultancy and information related thereto; Scientific research and providing advisory, consultancy and information related thereto; Hosting computer servers, namely, hosting the web sites of others on a computer server for a global computer network; Software as a service (SaaS) services featuring software for use in database management; Cloud computing featuring software for use in database management; Research, analysis and consultancy relating to computer software design and computer programming; Providing information relating to computer software design, computer programming, or maintenance of computer software; Configuration management of computer software; Creating, maintaining, modernizing computer software and providing information related thereto; Creating or maintaining web sites for others; Providing user authentication services using single sign-on technology for online software applications in electronic transaction; Creating home pages on the Internet for others; Rental of web servers for the Internet; computer services including fault diagnosis and computer system audit, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, Trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; Monitoring of computer systems to detect breakdowns by remote access; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Troubleshooting of computer software problems; Technological consulting services in the field of operating computer hardware, software or computer peripheral devices; Technological consulting services in the field of information technology (IT) platform; Providing of electronic data back-up services and consulting or advisory and providing information relating thereto in the field of computer systems; Recovery of computer data and consulting, advisory or providing information relating thereto; Design of computer software for agriculture and horticulture; computer programming for agriculture and horticulture; maintenance of computer software for agriculture and horticulture; in International Class 42.

 

Providing information relating to vermin exterminating, control or killing of vermin for agriculture, horticulture and forestry via the Internet; Weed killing; Providing information and consultancy or advisory relating to vermin exterminating, control or killing vermin, and weed for agriculture, horticulture and forestry; Animal breeding; Veterinary services; Beautification for animals, namely, animal grooming; Rental of potted plants; Consultancy or advisory and providing information relating to animal breeding; Consultancy or advisory and providing information relating to veterinary services; Consultancy or advisory and providing information relating to animal grooming; Spreading of fertilizers and other agricultural chemicals, insecticide and repellent; Consultancy or advisory and providing information relating to spreading of fertilizers and other agricultural chemicals, insecticide and repellent; Consultancy or advisory and providing information relating to spreading of fertilizers and other agricultural chemicals, insecticide and repellent for agriculture, horticulture or forestry; Plant nursery services; Consultancy or advisory and providing information relating to plant nursery services; Providing information relating to vineyard horticulture via computer terminals; in International Class 44.

 

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.

 

Requirements for Combined Applications

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)/Trademark Act Section 44/Trademark Act Sections 1(b) and 44:

 

(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 eight classes; however, applicant submitted a fee(s) sufficient for only six class(es).  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)/Section 44/Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Foreign Language Significance of Wording in the Mark

To permit proper examination of the application, applicant must specify whether “KAKASHI” in the mark has any meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §§809, 814.  If the wording has meaning in a foreign language, applicant must provide an English translation, and may use the following format:  The English translation of “KAKASHI” is ____” [Provide English translation].  TMEP §809.03.

 

Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement:  The wording “KAKASHI” has no meaning in a foreign language. 

 

Id.

 

Sections 1(b) and 44(d) Filing Bases

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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, an 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.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  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).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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. 

 

 

 

 

 

/Renee McCray/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 111

571.272.9388

renee.mccray@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. 88085343

 

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.