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: 1/17/2019

 

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 below issue(s).  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 USPTO’s database of registered and pending marks has been searched and no conflicting marks were found that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES APPLICANT MUST ADDRESS:

 

·       CLASSIFICATION AND IDENTIFICATION OF GOODS

·       MULTIPLE-CLASS REQUIREMENTS

 

CLASSIFICATION AND IDENTIFICATION OF GOODS:

 

The identification of goods “Pet incontinence pads” is indefinite and must be clarified because the nature of the goods is unclear and because the proper classification for the goods cannot be determined as written.  See TMEP §§1402.01, 1402.03.   Applicant must clarify the type of “pad” in order to determine the nature of the goods and in turn the proper classification for the goods.  Specifically, if the goods are “diapers for pets,” they are in Class 5. However, if the goods are “disposable house training pads for pets” (sometimes referred to informally as “pee pads”), the proper classification for the goods is International Class 16.

 

The identification of goods “Pet Crate Pads” is indefinite and must be clarified because the nature of the goods is unclear and because the proper classification for the goods cannot be determined as written.  See TMEP §§1402.01, 1402.03.   As with the above identification, clarification as to the type of “pad” is necessary in order to determine the nature of the goods and the proper classification for the goods.  If the goods are “Disposable house training pads for use in pet crates” or “Paper pet crate mats” they are classified in International Class 16. Alternatively, if they are “Pet crate pads in the nature of cushions” or “Pet crate pads in the nature of bedding,” the proper class for the goods is International Class 20.

 

The identification of goods “Pet Bed Mats,” which applicant classified in International Class 27, is indefinite and must be clarified because the nature of the goods is unclear and because it is broad enough to include goods in more than one international class.  See TMEP §§1402.01, 1402.03.   Applicant must clarify the use or purpose of the “mat” in order to determine the proper classification for the goods.  As the goods have been identified as a “bed mat,” it appears they are intended for sleeping/relaxation purposes, and would therefore be classified in Class 20 as a type of bed, rather than as a traditional floor mat in Class 27.  Therefore, applicant may adopt “mats intended as beds for household pets” in Class 20, if accurate.

 

In summary, applicant may adopt any or all of the following amended identifications, if accurate, along with the corresponding international classes.  Amended/reclassified identifications are shown in bold:

 

CLASS 5:       Diapers for pets

 

CLASS 16:     Disposable house training pads for pets; Disposable house training pads for use in pet crates

 

CLASS 20:     Pet Crates, Pet Beds, Cat Scratching Pads, Cat scratching posts; Pet crate pads in the nature of cushions; Mats intended as beds for household pets

 

CLASS 21:     Pet Litter Scooper

 

CLASS 27:     Pet floor mats

 

CLASS 28:     Pet Toys

 

ID Manual Available Online

 

For further assistance with identifying and classifying the goods, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Scope Advisory

 

Applicant may clarify or limit the identification; however, applicant may not broaden the scope of the goods or services or substitute different goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

If applicant chooses to add any additional international class(es) to the application, applicant must comply with the below “MULTIPLE-CLASS REQUIREMENTS.” 

 

MULTIPLE-CLASS REQUIREMENTS:

 

The application identifies goods that are broad enough to be classified in at least six classes; however, applicant submitted a fee for only five classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to goods in five classes, or (2) submit the fees for each additional class.

 

If applicant chooses to add any additional classes to this application, applicant must comply with each of the following requirements for each 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 already paid. The fee for adding a class to a TEAS Reduced Fee (RF) application is presently $275 per class (view the USPTO’s current fee schedule). 

 

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).

 

For more information on how to add class(es) to an application and instructions on how to satisfy the requirements for a multiple-class application using the Trademark Electronic Application System (TEAS) website, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

RESPONSE GUIDELINES:

 

Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms. 

 

If applicant requires technical assistance in using the online response form, please email TEAS@uspto.gov.

 

 

 

/Kristin Carlson/

Trademark Examiner, LO 105

571-272-2240

kristin.carlson@uspto.gov

800-786-9199 (Trademark Assistance Center)

 

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 1/17/2019 FOR U.S. APPLICATION SERIAL NO. 88137965

 

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 1/17/2019 (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.