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: 7/15/2019

 

 

This Office action is in response to applicant’s communication filed on 6/21/2019.

 

The trademark examining attorney notes that the following requirement(s) have been satisfied:

 

DISCLAIMER

See TMEP §§713.02, 714.04. 

 

Upon further review, the following additional issues arose.  The Examining Attorney apologizes for any inconvenience this may cause. All previous arguments and evidence are incorporated herein by reference.

           

The trademark examining attorney notes that the following requirement raises new issues:

 

IDENTIFICATION OF GOODS

Applicant must respond to the requirements set forth below:

 

 

 

IDENTIFICATION OF GOODS – NEW ISSUE

 

The identification of goods is indefinite and must be clarified because it lacks specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

 

Additionally, several items impermissibly expand the scope of the original application.

 

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

·         CLASS 2:

 

The proposed amendment identifies the following goods and/or services:  “Watercolor paints”.      This portion of the proposed amendment is beyond the scope of the original identification because it was not filed in the original application.

 

 

·         CLASS 6:

 

The proposed amendment identifies the following goods and/or services:  “decorative wall plaques made of common metal.”   This portion of the proposed amendment is beyond the scope of the original identification because it was not filed in the original application.

 

 

·         CLASS 11:

 

                                               

In this case, the application originally identified the goods and/or services as follows:  “Diffusers (non-electric wick and oil).”

 

However, the proposed amendment identifies the following goods and/or services:  “Diffusers, namely, non-electric.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because it fails to narrow the scope of the goods to those being “non-electric wick and oil” types.

 

 

·         CLASS 14:

 

The proposed amendment identifies the following goods and/or services:  “jewelry making kits”.      This portion of the proposed amendment is beyond the scope of the original identification because it was not filed in the original application.

 

 

·         CLASS 16:

 

                                               

In this case, the application originally identified the goods and/or services as follows:  “Chalk clipboard attached for school, home and decorative use.”

 

However, the proposed amendment identifies the following goods and/or services:  “Chalkboards with clips.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because the original entry specified a “clipboard” whereas the proposed amended entry specifies a chalkboard with clips.

 

Chalkboards with clips [beyond original ID scope] attached for school, home and decorative use;   Chalk clipboard, namely, {applicant must specify the goods contemplated, for example, clipboard-size chalk boards for school and home use};

 

Applicant may adopt the following wording, if accurate: 

 

 

 

Class 2:            Dimensional Fabric Paint; Fabric Dye; Watercolor paints [beyond original ID scope]

 

 

 

Class 4:            Candles; Fragrant wax for use in potpourri burners 

 

 

 

Class 6:            Galvanized metal hooks; Metal baskets; Metal letters for decorative use; decorative wall plaques made of common metal [beyond original ID scope]

 

 

 

Class 7:              Hot melt glue guns 

 

 

Class 8:            Scissors; Hand tools for use in modeling clay, namely, knives, picks, and scrapers, all of the aforesaid being for hobby use 

 

 

Class 11:          Electric candle warmers; Decorative electric lights, namely, string lights, electrically-illuminated lanterns and LED light strips, all for decorative use; Diffusers, namely, non-electric, [beyond original ID scope] namely, {applicant must specify the goods contemplated, for example, non-electric air diffusers comprised of a wick in a container used to emit scent when lit sold without scented oil};  Non-electric candle lanterns for decorative use, namely, {applicant must specify the goods contemplated,  because “candle lanterns” is overbroad wording that includes lanterns in the nature of lighting apparatus in Class 11 and/or lanterns in the nature of candle holders in Class 21};

 

 

Class 14:          Jewelry; jewelry making kits [beyond original ID scope]

 

 

 

Class 16:          Arts and craft paint kits; Art pads; Art portfolio cases; Art supplies, namely, artists' brushes, paint trays; Artisan glue, namely, fabric glue for household use and glue for stationery or household use; Arts and crafts clay kits; Brushes, namely, paint brushes; Calendars; Canvas for painting;  Chalkboards with clips [beyond original ID scope] attached for school, home and decorative use;  ORIGINAL ID WITH SUGGESTION:  Chalk clipboard, namely, {applicant must specify the goods contemplated, for example, clipboard-size chalk boards for school and home use}; Chalk decals, namely, decals with chalkboard finish for school, home and decorative use;  Chalk duct tape, namely, duct tape with chalkboard finish for school, home and decorative use  [moved to Class 17];   Chalk placemats, namely, placemats place mats of paper with chalkboard finish for school, home and decorative use; Chalk boards for school and home use;  Chalkboard easels, namely, easels with chalkboard finish for school, home and decorative use;  Chalkboard stickers, namely, stickers with chalkboard finish for school, home and decorative use;  Chalkboard tags, namely, paper hang tags and gift tags with chalkboard finish for school, home and decorative use;  Craft paper; Crayons;  Cross-stitch and embroidery kits consisting primarily of thread/floss, needles, cloth and cross-stitch and embroidery design patterns printed on paper, embroidery thread, floss, needles, and cloth [moved in part to Classes 23 and 24] ; Desk Organizers organizers, namely, pen and pencil trays, calendar desk pads, filing document file trays, and office organizer cubbies, namely, {applicant must specify the goods contemplated}; Drawing instruments; Dry erase writing boards; Easels; Fabric glue for household use; Fabric markers for writing on textile; Foam stamps for paper crafting; Iron-on transfer paper, namely, paper used for the transfer of designs; Iron-on transfers; Markers; Memo boards, namely, bulletin boards in the nature of ______{applicant must clarify, for example, magnetic boards for scheduling activities and appointments}; Memory books; Note cards;             Office supplies, namely, letter openers, staplers; Paint brushes; Paper; Paper bags; Paper party decorations; Paper goods and printed materials, namely, paper gift wrap bows, poster boards and printed materials, namely, {applicant must specify the “printed” goods contemplated, for example, printed educational materials in the field of {specify subject matter}; Paper mats, namely, {applicant must specify the goods contemplated, for example, paper place mats} and mat boards for frames, namely, picture framing mat boards; Paper party ornaments; Paper tags; Pastels; Pencil holders; Pencils; Pens;  Photo cards, namely, greeting cards that hold photos; Photograph albums;  Photograph books in the nature of photo albums, namely, books for collecting and storing photographs; Rubber bands;  Rulers, namely, drawing rulers; Scrapbook pages; Scrapbooks;  Sketchboards in the nature of sketch books and sketch pads, namely, stationery boards for holding sketch paper; Sketch books; Stencils; Stickers; Sticky notes in the nature of adhesive note paper; Wedding albums; Wrapping paper; Stationery;   paper napkins, paper tablecloths [beyond original ID scope]; storage containers made of paper [beyond original ID scope]  ; Hobby craft kits for painting comprised primarily of paint brushes, paints, wood, metal, glass, plaster or plastic surface [moved from Class 28]  ; Hobby craft kits including comprising primarily modeling clay, foam, feathers, beads, wiggly eyes, wood crafts, glue, and tape  {the class that includes the majority of individual components in the hobby craft kit generally controls the classification for the entire kit} [moved from Class 28]  

 

 

 

 

Class 17:          Plastic foam used for arts and crafts; Chalk duct tape, namely, duct tape with chalkboard finish for school, home and decorative use [moved from Class 16];

 

 

 

Class 20:          Decorative wall plaques made of plastic, plaster, or wood; Display cases; Figurines of wood, plastic, plaster; Decorative glitter; Decorative mirrors; Party ornaments of plastic;  Picture frames; Pillows; Plant stands; Toy chests for crafting, namely, unfinished wood toy chests for personalizing; Wood boxes; Wood crafting surfaces, namely, unfinished wood _____ {applicant must clarify, for example, pieces and shapes, or for example, boxes} used in arts and crafts; Wood crates; Wood furniture chests; Wood stools for crafting, namely, unfinished wood stools for personalizing; Wood tables for crafting, namely, unfinished wood tables for personalizing 

 

 

  

Class 21:          Apothecary glass jars; Bakeware; Baskets for household purposes, not of metal; Beverage glasses, namely, drinking glasses; Candle holders; Ceramic mugs; Containers for household use; Containers made of fabric, namely, collapsible fabric storage containers for domestic use; Containers for household or kitchen use made of non-precious metals; Containers for household or kitchen use made of wicker;  Decorative plastic household storage items, namely, jars, boxes, plates, dishes, bowls, canisters for {specify household items, e.g., cereals, crayons, vehicle keys, etc.}; Flower pots; Flower vases; Fragrance oil burners; Glass drink dispensers;

Glass mosaics, not for buildings; Glass storage containers for domestic or household use; Mugs; Pillar candle plates; Planters for flowers and plants; Plastic storage containers for domestic use;

Potpourri dishes; Sponges for household use, namely, for painting; Trays for domestic purposes; Urns;  Non-electric candle lanterns in the nature of candle holders for decorative use; glass and ceramic decorative wall plaques; Chalk placemats, namely, place mats, not of paper or textile, with chalkboard finish for school, home and decorative use   

 

 

 

Class 22:          Rope balls; Rope on a spool; Twine, namely, sisal ball; Twine baskets 

 

 

 

Class 23:          Embroidery floss; Thread; Cross-stitch and embroidery kits consisting primarily of embroidery thread, floss, needles, cloth and embroidery design patterns [moved in part from Class 16]  

 

 

 

 

Class 24:          Table napkins of textile; Textile placemats; Table cloths not of paper; Burlap laminated on a roll, namely, rolls of burlap fabric; Chalk placemats, namely, place mats of textile material with chalkboard finish for school, home and decorative use; Cross-stitch and embroidery kits consisting primarily of traced cloth for embroidery, embroidery thread, floss, needles, and embroidery design patterns [moved in part from Class 16]  

   

 

 

 

Class 25:          Aprons; Baby creepers; Bandanas 

 

 

 

Class 26:          Arts and crafts findings, namely, laminated rolled burlap (,) (;) and burlap bags (,) (;)   burlap boards, namely, boards covered in burlap for household and school use (,) (;)  and  burlap panels for art;  Crochet hooks; Feathers for ornamentation; Needlepoint kits comprised mainly of needles, thread, patterns, cloth and/or  and canvas;  Quilting and sewing materials comprised mainly of needles, thimbles, scissors, threads, fabric, batting; Rhinestones other than for making jewelry, namely, for clothing; Haberdashery ribbons; Ribbons, not of paper, for wrapping 

 

 

 

Class 28:          Christmas tree decorations; Christmas tree ornaments;   Hobby craft kits for making models, namely, scale model kits; Hobby craft kits for painting comprised primarily of paint brushes, paints, wood, metal, glass, plaster or plastic surface [moved to Class 16];  Hobby craft kits including comprising primarily modeling clay, foam, feathers, beads, wiggly eyes, wood crafts, glue, and tape  {the class that includes the majority of individual components in the hobby craft kit generally controls the classification for the entire kit} [tentatively moved to Class 16]  [Classification of multi-component kits that have no predominant components is determined by the first listed component. Rearranging the order of the components listed for kits which have no predominant components will impact the classification, with the class of the first-listed component dictating the appropriate class for the kits.]

 

 

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the application will then proceed with the following goods only, (and the remaining goods will be deleted from the application):

 

 

Class 2:            Dimensional Fabric Paint; Fabric Dye

 

 

Class 4:            Candles; Fragrant wax for use in potpourri burners 

 

 

 

Class 6:            Galvanized metal hooks; Metal baskets; Metal letters for decorative use

 

 

Class 7:              Hot melt glue guns 

 

 

Class 8:            Scissors 

 

Class 11:          Electric candle warmers; Decorative electric lights, namely, string lights, electrically-illuminated lanterns and LED light strips, all for decorative use

  

 

Class 14:          Jewelry  

 

 

Class 16:          Arts and craft paint kits; Art pads; Art portfolio cases; Art supplies, namely, artists' brushes, paint trays; Artisan glue, namely, fabric glue for household use and glue for stationery or household use; Arts and crafts clay kits; Brushes, namely, paint brushes; Calendars; Canvas for painting;  Chalk decals, namely, decals with chalkboard finish for school, home and decorative use;  Chalkboard easels, namely, easels with chalkboard finish for school, home and decorative use;  Chalkboard stickers, namely, stickers with chalkboard finish for school, home and decorative use;  Chalkboard tags, namely, paper hang tags and gift tags with chalkboard finish for school, home and decorative use;  Craft paper; Crayons;  Drawing instruments; Dry erase writing boards; Easels; Fabric glue for household use; Fabric markers for writing on textile; Foam stamps for paper crafting; Iron-on transfer paper, namely, paper used for the transfer of designs; Iron-on transfers; Markers; Memory books; Note cards;             Office supplies, namely, letter openers, staplers; Paint brushes; Paper; Paper bags; Paper party decorations; Paper party ornaments; Paper tags; Pastels; Pencil holders; Pencils; Pens;  Photo cards, namely, greeting cards that hold photos; Photograph albums; Rubber bands;  Rulers, namely, drawing rulers; Scrapbook pages; Scrapbooks;  Sketch books; Stencils; Stickers; Sticky notes in the nature of adhesive note paper; Wedding albums; Wrapping paper; Stationery

 

 

Class 17:          Plastic foam used for arts and crafts

 

 

 

Class 20:          Decorative wall plaques made of plastic, plaster, or wood; Display cases; Figurines of wood, plastic, plaster; Decorative glitter; Decorative mirrors; Party ornaments of plastic;  Picture frames; Pillows; Plant stands; Toy chests for crafting, namely, unfinished wood toy chests for personalizing; Wood boxes; Wood crates; Wood furniture chests; Wood stools for crafting, namely, unfinished wood stools for personalizing; Wood tables for crafting, namely, unfinished wood tables for personalizing 

 

 

  

Class 21:          Apothecary glass jars; Bakeware; Baskets for household purposes, not of metal; Beverage glasses, namely, drinking glasses; Candle holders; Ceramic mugs; Containers for household use; Containers made of fabric, namely, collapsible fabric storage containers for domestic use; Containers for household or kitchen use made of non-precious metals; Containers for household or kitchen use made of wicker;  Flower pots; Flower vases; Fragrance oil burners; Glass drink dispensers; Glass mosaics, not for buildings; Glass storage containers for domestic or household use; Mugs; Pillar candle plates; Planters for flowers and plants; Plastic storage containers for domestic use; Potpourri dishes; Sponges for household use, namely, for painting; Trays for domestic purposes; Urns 

 

 

Class 22:          Rope balls; Rope on a spool; Twine, namely, sisal ball; Twine baskets 

 

 

 

Class 23:          Embroidery floss; Thread

 

 

Class 24:          Table napkins of textile; Textile placemats; Table cloths not of paper; Burlap laminated on a roll, namely, rolls of burlap fabric

  

 

Class 25:          Aprons; Baby creepers; Bandanas 

 

 

 

Class 26:          Crochet hooks; Feathers for ornamentation; Quilting and sewing materials comprised mainly of needles, thimbles, scissors, threads, fabric, batting; Rhinestones other than for making jewelry, namely, for clothing; Haberdashery ribbons; Ribbons, not of paper, for wrapping 

 

 

 

Class 28:          Christmas tree decorations; Christmas tree ornaments;   Hobby craft kits for making models, namely, scale model kits

 

 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

 

 

RESPONSE GUIDELINES

 

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. 

 

 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

 

 

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.  

 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on 7/15/2019 for

U.S. Trademark Application Serial No. 88104936

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from , using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in TSDR to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees.  These companies often have names similar to the USPTO.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.