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: 4/12/2019

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on March 20, 2018, in which applicant responded to the requirements to clarify the identification of goods, enter a disclaimer, and amend the mark description.  The disclaimer requirement is satisfied.  The amendment to the identification of goods in International Class 10 is acceptable.  However, the amended wording in International Class 18 remains unacceptable for the reasons stated below.  Accordingly, the requirement to clarify the identification of goods is now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

FINAL Identification of Goods Requirement

 

The goods in International Class 18 were originally identified as follows:

 

International Class 18: Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care

 

The applicant was required to clarify this wording because “Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care” included pet blankets, which are in International Class 24. Moreover, to the extent the goods are specially adapted for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus for use in veterinary care, they encompass therapeutic goods in International Class 10. The nature of “other pet and animal accessories” was also required to be specified.

 

In response to the examiner’s requirement to clarify the description of the goods, the applicant has proposed the following amendments:

 

International Class 18: Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care

 

Although the applicant has clarified the nature of the straps and accessories, the identification continues to be overly broad because it still includes blankets, which could encompass “horse blankets” or “saddle blankets” in International Class 18, or “pet blankets” in International Class 24.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. It is noted that characterizing the blanket as a “covering” does not make it a Class 18 good because all blankets may be said to be “coverings.”   In addition, the identification still includes items designed to hold high frequency electromagnetic therapy apparatus, which encompasses therapeutic goods in International Class 10.  See id.

 

Therefore, the requirement to clarify the identification of goods is now made final. See 37 C.F.R. §2.64(a); TMEP §714.04.

 

Applicant may substitute the following wording, if accurate (suggested amendments in bold and suggested deletions in struck-though text):

 

International Class 10: High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care

 

International Class 18: Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, saddle blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care

 

International Class 24: Pet blankets

 

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.

 

Applicant’s Arguments

 

The applicant argues that the requirement to amend the identification in International Class 18 is inappropriate because similar wording was accepted in U.S. Registrations Nos. 5646203 and 5646204.  The applicant refers the examiner to the arguments made with the propriety of the identification in those files, and urges the examiner to consider the identification in view of the USPTO Consistency Initiative provisions.  Applicant’s argument have been considered, but are not persuasive for the following reasons.

 

First, as a general matter, when determining whether an applied-for mark is eligible for registration, each application must be considered on its own record.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”).

 

In any event, the examiner notes that the arguments made in the prior registrations pertained to the analogy of the goods in the applications as pet restraining devices, which are in International Class 18.  The arguments did not specifically pertain to the nature of the blankets or the fact that the goods are designed to hold high frequency electromagnetic therapy apparatus.  Accordingly, these arguments are not persuasive in the present instance.

 

With regard to the Consistency Initiative, the applicant may request review of the examiner’s determination pursuant to the provisions set forth at http://www.gov.uspto.report/trademark/trademark-updates-and-announcements/consistency-initiative, provided that the application meets the stated conditions.

 

Multiple-Class Application 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 three 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.

 

Proper Response to Final Office Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  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 resolves all outstanding refusals; 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.   

 

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 4/12/2019 FOR U.S. APPLICATION SERIAL NO. 88108916

 

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 4/12/2019 (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.