To: | Thundershirt, LLC (ear-ptotmcorrespondence@mvalaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88143737 - THUNDERCLOUD - 026992.171 |
Sent: | 1/16/2019 5:14:17 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88143737
MARK: THUNDERCLOUD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Thundershirt, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 1/16/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On January 16, 2019, the trademark examining attorney and Ellen A. Rubel discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Applicant has classified the following goods in International Class 11: “sound transmitting apparatus; electronic sound machine for blocking noise and transmitting white noise; and ambient sound machine.” However, the proper classification for these items is in International Class 9.
With respect to the combination or multi-function goods, if the primary goods are actually the sound transmitting apparatus which features an air diffuser for use with fragrance, then, with appropriate clarification, the goods will be in Class 9. However, if the primary goods are actually an air diffuser for use with fragrance which features a sound transmitting apparatus, then the goods will likely be in Class 11. In other words, because goods are classified according to the primary goods, it must be clear in the identification which are the primary goods.
Additionally, the wording “fragrance diffusers” is indefinite and overbroad as it could encompass certain fragrance diffusers in International Class 3, including for example air fragrance reed diffusers or reed diffusers comprised of scented oils and also including reeds and a diffuser container. Generally, the scent diffusers that are properly classified in Class 3 are those where the primary component of the goods is the scented oil or fragrance, which itself is in Class 3. Class 11 is more appropriate for diffusers where the device itself is the primary item. Thus, electrical diffusers or diffusers expressly sold without fragrance are properly classified in Class 11.
Applicant may adopt the following wording, which incorporates additional suggestions to clarify the nature of the goods, if accurate:
Class 3: Fragrance diffusers, in the nature of air fragrance reed diffusers
Class 9: Sound transmitting apparatus, namely, electronic sound machine for blocking noise and transmitting white noise and ambient sound machine; sound transmitting apparatus, in the nature of an ambient sound machine which also features an air diffuser for use with essential oils or aromatherapy
Class 11: Combination air diffuser for use with essential oils or aromatherapy which also features ambient sound machine; air diffusers for use with essential oils, and air diffusers for aromatherapy; fragrance diffusers, namely, electric diffusers for dispensing air fragrance preparations and fragrance dispensing unit which also features an ambient sound machine
The applicant should also note the following when amending the identifications:
Applicant must also address the following requirement.
(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 (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least three (3) classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 9 and 11 only. See more information about specimens.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Valeriya Painter/
Examining Attorney
Law Office 121
(571) 270-7132
valeriya.painter@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.