Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  January 07, 2021

 

 This Office action is in response to applicant’s communication filed on 11/3/20.  The examining attorney has determined as follows:

 

• The following requirements are continued:  the requirement that applicant amend the identification of goods, and that applicant comply with all multi-class application requirements.  Please see below for details.
• The applicant must respond to an information requirement.  Please see below for details.

• In addition, the following refusal(s) and/or requirement(s) have been withdrawn: the Section 2(d) refusal to register because the cited registration (Reg. No. 4523289) has been cancelled.  See TMEP §§713.02, 714.04.  Please see below for details.

 

PARTIAL REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOODS -- CONTINUED

 

“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  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 and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

                                                                                                                                             

The applicant has applied to register the mark for, as amended:

 

IC 29:  Coffee creamer; Creamer; keto-friendly alternatives to creamer

 

IC 30:  Coffee; coffee products, namely, coffee packets, instant coffee, coffee capsules containing coffee for brewing; coffee beans; artificial coffee; ground coffee; freeze-dried coffee; additives for coffee, namely, flavorings for coffee, and dietary supplements; beverages consisting principally of coffee; beverages made from coffee; beverages with a coffee base; coffee beverages; coffee drinks; coffee essences; coffee extracts; coffee flavourings, namely, coffee creamer; coffee substitutes; decaffeinated coffee; extracts of coffee for use as flavours in beverages; instant coffee; iced coffee; coffee-based iced beverages; mixtures of coffee essences and coffee extracts; coffee-based beverages and preparations in the nature of coffee-based drinks, coffee-based beverages; extracts of coffee substitutes; preparations and beverages based on coffee substitutes, namely, keto-friendly alternatives to creamer

 

Portions of the identification of goods are indefinite and must be clarified as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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.

 

Applicant may adopt the following wording, if accurate: 

 

IC 5:  Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes, intended to be added to coffee

 

IC 29:  Coffee creamer; [clarify “Creamer”, e.g., creamers for beverages]; [clarify “keto-friendly alternatives to creamer” and reclassify the goods as necessary]

 

IC 30:  Coffee; coffee products, namely, [clarify “coffee packets”, e.g., coffee in single serve packaging], instant coffee, coffee capsules containing coffee for brewing; coffee beans; artificial coffee; ground coffee beans; freeze-dried coffee; additives for coffee, namely, flavorings for coffee in the nature of [specify, e.g., syrup for flavoring coffee], and [clarify why the wording “dietary supplements” appears here:  dietary supplements are generally classified in International Class 5]; beverages consisting principally of coffee; beverages made from coffee; beverages with a coffee base; coffee beverages; coffee drinks; coffee essences; coffee extracts; coffee substitutes; decaffeinated coffee; extracts of coffee for use as flavors in beverages;  instant coffee; iced coffee; coffee-based iced beverages; mixtures of coffee essences and coffee extracts; coffee-based beverages and [clarify “preparations in the nature of coffee-based drinks, coffee-based beverages”, and delete “preparations in the nature of …” if this wording is superfluous, as it appears to be]; extracts of coffee substitutes; [clarify “preparations and beverages based on coffee substitutes, namely, keto-friendly alternatives to creamer” and reclassify as necessary]

 

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.

 

REQIREMENT THAT APPLICANT COMPLY WITH ALL MULTI-CLASS APPLICATION REQUIREMENTS – CONTINUED

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

INFORMATION REQUIREMENT

 

To permit proper examination of the application, applicant must submit additional product information about some of the applicant’s goods because the nature of such goods is not clear from the present record, in particular, the goods identified as “keto-friendly alternatives to creamer” (Class 29), “preparations, beverages based on coffee substitutes, namely, keto-friendly alternatives to creamer” (Class 30), and “additives for coffee, namely…dietary supplements” (Class 30).  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.  This information will aid the Office in properly identifying and classifying the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

GENERAL RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@uspto.gov

 

 

 

ADDITIONAL RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 07, 2021 for

U.S. Trademark Application Serial No. 88212476

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 07, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”