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:  August 26, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on February 6, 2019 in connection with this application.  Based on the new U.S.-licensed Attorney rule that went into effect on August 3, 2019, the trademark examining attorney now issues the following new requirement:  Representation by a U.S.-licensed Attorney Required.  See 37 C.F.R. §§2.2(o), 2.11(a); TMEP §§706, 711.02.

 

In a previous Office action dated February 6, 2019, the trademark examining attorney issued the following requirements: amend the classification and identification of goods and/or services; satisfy the multiple-class application requirements; clarify whether the name in the mark identifies a particular living individual.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  multiple-class application requirements met; name of individual clarification provided.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

·         NEW ISSUE: U.S.-Licensed Attorney Representation – Requirement

·         Continued and Maintained: Classification and Identification of Goods and Services – Clarification Requirement

 

Applicant must respond to all issues raised in this Office action and the previous February 6, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

NEW ISSUE:  U.S.-LICENSED ATTORNEY REPRESENTATION – REQUIREMENT

 

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in Canada, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIREMENT

 

Applicant has classified “lunch bags of nylon and canvas” in International Class 18; however, the proper classification is International Class 21.  Applicant must amend the application to classify these goods in International Class 21.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “decorative paper” in the identification of goods in International Class 16 is indefinite and must be clarified because the nature of these goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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.

 

Similarly, the wording “Entertainment services namely entertainment services relating to television shows in the field of children's entertainment;” in the identification of services in International Class 41 is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Likewise, applicant must include additional wording in the entries “presentation of live performances in the field of children's entertainment; production of shows in the field of children's entertainment; organization of shows for entertainment purposes” in order to further clarify the types of performances and shows presented, produced, or organized.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, for clarification purposes, applicant must amend the term “headgear” in International Class 25 to “headwear” to accurately characterize the goods following this wording.  Specifically, “headgear, namely, […] caps” remains indefinite because the nature of the caps is unclear. 

 

Finally, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods in International Class 28.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.  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. 

 

Suggested Amendment

 

Applicant may substitute the following wording, if accurate (suggestions in bold): 

 

International Class 16:            Paper, cardboard and goods made from these materials, namely, paper goodie bags, cardboard boxes, drawing paper, craft paper, wrapping paper and paper party decorations; coloring books, notebooks, sketchbooks, sticker books, stickers; drawing and coloring templates; stationery, namely, crayons and markers; books and publications, namely, books, magazines and comic books featuring animation

 

International 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

 

International Class 21:            Bowls; lunch boxes; lunch bags not of paper; plates; household containers for food; drinking glasses; cups; mugs; hair brushes and combs; toothbrushes; lunch bags of nylon and canvas

 

International Class 25:            Clothing, namely, children's clothing in the nature of shirts, pants, shorts, sweatshirts, dresses, t-shirts, skirts, jackets, sleep wear and undergarments; footwear, namely, children's footwear; headwear, namely, hats, caps, head bands and earmuffs

 

International Class 28:            Toys, games and playthings namely, dolls and accessories therefor; plush toys; stuffed toys; toy vehicles; ride-on toys; toy character figures and toy animal figures; toy figures and playsets for toy figures; toy pets and accessories therefor; modeled plastic toy figurines; children's multiple activity toys; puzzles; board games; children's educational games for developing fine motor skills; children's educational games for developing counting skills; electronic educational game machines for children; party balloons; pinatas; paper party favors; party favors in the nature of small toys; paper party hats; party games; bath toys

 

International Class 41:            Entertainment services, namely, {specify common name of service, e.g., providing information relating to the distribution of} entertainment services relating to television shows in the field of children's entertainment; entertainment in the nature of ongoing television programs in the field of children's entertainment; entertainment services, namely, providing webcasts in the field of children's entertainment; presentation of live show performances in the field of children's entertainment; production of television shows in the field of children's entertainment; organization of exhibitions for entertainment purposes

 

The identification of goods and services in International Classes 3, 9, 20, and 24 is acceptable as amended in applicant’s August 2, 2019 response.

 

Amendment Guidelines

 

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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

ASSISTANCE

 

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.

 

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.  

 

 

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

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@uspto.gov

 

 

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 August 26, 2019 for

U.S. Trademark Application Serial No. 88228807

 

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. 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@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 August 26, 2019, 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.”