To: | EMS STUDIO, LLC (ipladocket@swlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88178571 - EM & FRIENDS - 56898.06100 |
Sent: | 12/4/2018 5:10:07 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. 88178571
MARK: EM & FRIENDS
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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: EMS STUDIO, LLC
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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: 12/4/2018
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).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
The identification of goods is unacceptable because the arrangement of the punctuation (semicolons in particular) renders some of the wording (i.e. publications and printed matter) in International Class 16 indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods. TMEP §1402.01(a).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Furthermore, the term “paper party favors” and “party favors” reference goods that are properly classified in an additional International Class (IC 28).
Applicant may adopt the following identification, if accurate: “Printed matter, namely, stationery, greeting cards, note cards, blank cards, wrapping paper, posters, publications in the nature of books, pamphlets and magazines in the field of gifts and collectibles, paper napkins, paper office supplies, namely, writing tablets, labels, notebooks, office supplies and accessories, namely, rubber bands, paperclips, clipboards, diaries, desk sets, memo pads, adhesive note pads and paper, rubber stamps, rubber stamp kits comprised of stamp pads, stamp pad inks and rubber stamps; party supplies, namely, paper bags, paper party decorations, and paper party ornaments; chalkboards; blank blackboards; blank dry-erase boards; paper coasters; pencil cases; pencil pouches, in International Class 16.
Flower vases; water bottles sold empty; household utensils, namely, turners, pot and pan scrapers, rolling pins, whisks, skimmers; bottle openers; tea balls of precious metal; basting spoons; hand operated coffee grinders and pepper mills; mixing spoons; kitchenware, namely, non-electric kettles and teapots; cookware, namely, roasting pans, non-electric cooking steamers, baking dishes, cake tins, muffin tins, cookery molds; glassware, namely, glass bowls, carafes, mugs, stoppers, storage jars, dishes, fruit bowls, wine glasses, drinking glasses and containers for household use; drinking vessels; brushes for pets; serving utensils, namely, serving tongs, forks, ladles and spoons; corn cob holders; salt and pepper shakers; corkscrews; plastic food storage containers for domestic use; chopping boards for kitchen use; coasters not of paper or textile; napkin rings; countertop paper towel holders; towel rails; dish drainers; refuse bins; soap dishes, lotion pump dispensers sold empty, tissue boxes, namely, ceramic, glass, porcelain and earthenware tissue boxes, toilet roll holders, toilet cleaning brushes and brush holders, watering cans; salad servers, namely, salad serving spoons and tongs, in International Class 21.
Paper party favors; party favors namely, [specify, i.e. party favors in the nature of small toys, party favor hats], in International Class 28.”
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
Classification
Requirements of Combined or Multiple-Class Applications
(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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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.
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
/Richard F. White/
Managing Attorney (Acting)
Law Office 121
Telephone: (571) 272-9442
Email: Richard.White@USPTO.gov
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.
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.