To: | PulPac AB (Docket@marshallip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88199450 - PULPAC - 32447/60062 |
Sent: | 2/28/2019 9:30:42 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88199450
MARK: PULPAC
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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: PulPac AB
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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: 2/28/2019
Introduction
Search Results
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).
Summary of Issues
Amended Identification of Goods Required
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. Specific issues and suggestions are outlined in the chart below.
Specific issues and suggestions are outlined in the chart below:
International Class 008:
Original |
Issue |
Suggestion |
Disposable tableware, namely, knives, forks and spoons |
Acceptable |
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Hand tools, hand-operated |
Indefinite, applicant must indicate the nature of the goods |
Hand tools, hand-operated, namely, {indicate the nature of the goods, e.g., hand-operated cutting tools} |
Food preparation implements, kitchen knives and cutlery |
Indefinite, applicant must indicate the nature of the goods; Separate entries with semi-colons |
Food preparation implements, namely, {indicate the nature of the goods, e.g., Japanese chopping kitchen knives}; kitchen knives and table cutlery |
International Class 016:
Original |
Issue |
Suggestion |
Paper and cardboard |
Acceptable |
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Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics |
Indefinite, applicant must indicate the nature of the goods |
Bags and articles for packaging, wrapping and storage made out of paper, cardboard and plastics, namely, {indicate the nature of the articles, e.g., cardboard boxes} |
International Class 020:
Original |
Issue |
Suggestion |
Closures for containers, non-metallic |
Acceptable |
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Coat hangers |
Acceptable |
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International Class 021:
Original |
Issue |
Suggestion |
Flower pots |
Acceptable |
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Tableware, cookware and containers |
Indefinite, applicant must indicate the nature of the goods |
Tableware, namely, {indicate the nature of the goods, e.g., tea services in the nature of tableware}; cookware, namely, {indicate types of cookware} and {indicate the type of containers, e.g., kitchen} containers |
Disposable table plates |
Acceptable |
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Mugs |
Acceptable |
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Bottles |
Clarification |
Bottles, sold empty |
Applicant may adopt the following identification of goods, if accurate:
International Class 008: Disposable tableware, namely, knives, forks and spoons; Hand tools, hand-operated, namely, {indicate the nature of the goods, e.g., hand-operated cutting tools}; Food preparation implements, namely, {indicate the nature of the goods, e.g., Japanese chopping kitchen knives}; kitchen knives and table cutlery
International Class 016: Paper and cardboard; Bags and articles for packaging, wrapping and storage made out of paper, cardboard and plastics, namely, {indicate the nature of the articles, e.g., cardboard boxes}
International Class 020: Closures for containers, non-metallic; Coat hangers
International Class 021: Flower pots; Tableware, namely, {indicate the nature of the goods, e.g., tea services in the nature of tableware}; cookware, namely, {indicate types of cookware} and {indicate the type of containers, e.g., kitchen} containers; Disposable table plates; Mugs; Bottles, sold empty
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.
Applicant must also address the following requirement.
Disclaimer Required
In this case, applicant must disclaim the wording “PULPAC” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a feature of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Here, applicant’s mark is “PULPAC” which is a telescoped mark from the words “PULP” and “PACK” A “telescoped mark,” which consists of two or more words combined to create a single word that shares letters, is merely descriptive or generic if the individual words are descriptive or generic and if the words retain their descriptive or generic meaning within the telescoped mark. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1118, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (holding FIRSTIER merely descriptive of banking services); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (holding NANDRIVE, a telescoped mark of the generic term “nand drive,” generic for electronic integrated circuits, including flash memory drives); TMEP §§1209.01(c)(i), 1209.03(d).
The attached dictionary evidence shows that “PULP” means “a material prepared by chemical or mechanical means from various materials (such as wood or rags) for use in making paper and cellulose products” and “PACK” means “an act or instance of packing.”
Applicant’s identified goods are “Disposable tableware, namely, knives, forks and spoons; Hand tools, hand-operated; Food preparation implements, kitchen knives and cutlery,” “Paper and cardboard; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics,” “Closures for containers, non-metallic; Coat hangers,” and “Flower pots; Tableware, cookware and containers; Disposable table plates; Mugs; Bottles.” Applicant’s attached website shows that applicant’ technology “enables fast and low cost production of packages and pressed paper fibre products with excellent mold replication” and “can be used to manufacture almost any types of packaging and disposable items, presently made of plastics.” Further, “the raw material used in the PulPac technology is traditional pulp from wood fibres.”
Additionally, the attached evidence from Wikipdia shows that “PULP” is “a packaging material.” Finally, the attached evidence from Keiding, UFP, and Atlantic Pulp all show that they use “PULP” products for packaging. Therefore, “PULPAC” is at least merely descriptive of applicant’s goods that are made out of pulp and used for packaging.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PULPAC” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant must also address the following requirement.
Amended Mark Description and Color Claim Required
The following description and color claim is suggested, if accurate:
Mark Description: The mark consists of a white tree inside a green triangle next to the word “PULPAC” in a green stylized font.
Color Claim: The color(s) green and white are claimed as a feature of the mark.
Applicant must also address the following requirement.
Application Unsigned – Declaration Required
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Response to Office Action
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.
/Jessie A. Maihos/
Examining Attorney
Law Office 121
(571) 270-3545
jessie.maihos@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.