To: | Spin Master Ltd. (katyd@spinmaster.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88162354 - CANDYLOCKS - N/A |
Sent: | 12/18/2018 4:27:03 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88162354
MARK: CANDYLOCKS
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Spin Master Ltd.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE 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: 12/18/2018
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.
NOTICE OF PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of Application Serial No. 87295774. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Notwithstanding the above referenced prior pending application, the applicant must respond to the following requirement:
IDENTIFICATION OF GOODS & SERVICES
Applicant must clarify the wording in the identification of goods and services in International Class 3 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods and/or services are. Further, this wording could identify goods and services in more than one international class. For example, duffle bags are in International Class 18 and entertainment services are in International Class 41. Further, applicant must amend the identification, as noted below, 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 following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications. TMEP §§1402.03(e), 1402.07(b). For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16. TMEP §1402.03(e).
If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See id. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id. Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41. See TMEP §§1402.07(b), 1402.11(a)(x).
The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets):
Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;
Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or
Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41.
Also, the identification for “accessories therefor” in relation to the arts and crafts kits is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). For example, paint brushes are in International Class 16, and beads for making jewelry are in International Class 14. Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification. See TMEP §§1402.01, 1402.03(a).
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Applicant may substitute the following wording, showing the suggested amendments in bold type, if accurate:
Class 3
Cosmetics; {specify type, e.g. non-medicated body} soaps; perfumery; essential oils; hair lotions; toiletries, namely, {specify generic name of goods, e.g. hair shampoos}; cleaning preparations
Class 5
{Specify type, e.g. Medicated body} soaps
Class 9
Computer software for {specify the function of the programs, e.g., for use in database management, for use as a
spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer game software; computer applications software for
{specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic
storage of data, etc.}; downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc.
and, if software is content- or field-specific, the content or field of use}; computer games and on-line computer games; pre-recorded audio and visual videos, CDs,
tapes and DVDs featuring fictional characters and activities for children, movies, television programs, books, music and instructions for use of toys
Class 14
Watches, clocks and jewelry
Class 16
Paper, cardboard and goods made from these materials, namely, {specify generic name of goods, e.g. paper and cardboard coasters}; printed matter, namely, {specify generic name of goods, e.g. business cards, greeting cards, posters}; photographs; stationery; {specify fiction or non-fiction}books {if non-fiction, the subject matter, e.g. featuring recipes} and printed publications in the nature of {indicate specific nature of publications, e.g. magazines} in the field of {indicate subject matter, e.g. candy}; stickers and sticker books; sketch books; arts and crafts kits and accessories therefor, namely, {specify type of accessories, e.g. paint brushes}
Class 18
Umbrellas; luggage tags; tote bags; carry-all bags; lunch bags of nylon and canvas; backpacks; rucksacks; school bags; fanny packs; messenger
bags; handbags; wallets and purses; athletic bags; travel bags; knapsacks; change purses; duffle bags; beach bags
Class 21
Lunch bags of nylon and canvas
Class 25
Clothing, namely, {specify articles of clothing, e.g. hats, shirts, dresses, etc.}; footwear; headgear, namely, {specify types of headwear, e.g. hats, baseball caps, etc.}
Class 41
Providing on-line computer games; Entertainment services, namely, {specify type of entertainment, e.g. live musical performances}; entertainment services relating to television shows, namely, {specify nature of services, e.g. an ongoing special variety, news, music or comedy show featuring {indicate subject matter} broadcast over television}; entertainment in the nature of ongoing television programs in the field of children’s programming; presentation of live {indicate type, e.g. show, dance, comedy, etc.} performances; production of {indicate type, e.g. television} shows; organization of {indicate type, e.g. fashion} shows for entertainment purposes
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.
CLASSIFICATION OF GOODS & SERVICES
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
Fees for Additional Classes
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE TO OFFICE ACTION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Alyssa Paladino Steel/
Trademark Examining Attorney
Law Office 124
U.S. Patent & Trademark Office
(571) 272-8808
alyssa.steel@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.