To: | Shaklee Corporation (ptotmdocket@klarquist.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88164420 - HUMAN.PROVEN. - 659210148202 |
Sent: | 1/23/2019 4:35:15 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88164420
MARK: HUMAN.PROVEN.
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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: Shaklee Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 1/23/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 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 trademark examining attorney has searched the Office’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).
However, applicant must respond to the following requirement.
IDENTIFICATIONS OF GOODS REQUIRE AMENDMENT
The wording “weight management products,” “food bars,” “drink mixes,” “teas,” “protein powders,” “powders used in the preparation of sports drinks,” “preparations for making beverages,” and “powdered concentrate for making beverages” in the International Class 5 identification of goods is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, “teas” includes both “medicinal tea” in International Class 5 and “tea” (being solely a beverage and having no medicinal properties) in International Class 30. Moreover, “powders used in the preparation of sports drinks” is classified in International Class 32.
The wording “promotional products such as clothing” in the International Class 11 identification is also indefinite and too broad. See TMEP §§1402.01, 1402.03. The wording “such as” is an open-ended term that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a). Thus, “promotional products such as clothing” refers to clothing but may also include other items such as pens, coffee mugs, etc. that are classified in a number of international classes. Therefore, the wording “such as” must be replaced with a close-ended term such as “namely.” Moreover, this wording includes goods that are not considered “goods in trade” such as promotional flyers that merely advertise applicant’s own goods and services and have no value apart from the promotion of applicant’s own goods and services. See 15 U.S.C. §§1051-52, 1127; TMEP §1202.06(b). Finally, the word “clothing” must indicate the specific types of clothing being offered, e.g., shirts, hats, etc.
The following are the suggested formats for the amended identifications:
Class 3: [NO CHANGE REQUIRED]
Class 5: Dietary and nutritional supplements; vitamin and mineral supplements; food supplements; weight management supplements; meal replacement bars for weight loss purposes, dietary supplement drink mixes, medicinal teas; all-purpose disinfectants;
protein supplements in powder form; powders used in the preparation of sports drinks; preparations in the
nature of {indicate form of preparations, e.g., syrups} for making {indicate Class 5 type, e.g., meal replacement} beverages adapted for
medical use; powdered concentrate for making nutritional supplement beverages
Class 11: Water purification units; water filters; promotional products such as clothing
Class 16: Promotional items, namely, {indicate specific Class 16 goods, e.g., pens; this does NOT include printed promotional items such as flyers and brochures about applicant’s own goods and services}
Class 21: Promotional items, namely, mugs
Class 25: Promotional clothing items, namely, {indicate specific Class 25 goods, e.g., shirts, hats}
Class 29: {Indicate Class 29 types, e.g., nut-based, fruit-based} food bars;
Class 30: {Indicate Class 30 types, e.g., grain-based, chocolate-based} food bars; tea
Class 32: Powders used in the preparation of sports drinks; preparations in the nature of {indicate form of preparations, e.g., syrups} for making beverages; powdered concentrate for making {indicate Class 32 types, e.g., sports} beverages
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 or add goods not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods that are classified in at least nine classes; however, applicant submitted fees sufficient for only three classes. Therefore, in response to the requirement that applicant amend the identifications of goods, applicant must either (1) restrict the amended identifications to three classes (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(a) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).
(b) Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). 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.
See 15 U.S.C. §§1051(b), 1112; 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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.
RESPONSE REQUIRED
For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal 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.