UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/20/2019

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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).

 

SUMMARY OF ISSUES

 

• Identification of Goods

 

IDENTIFICATION OF GOODS

 

Class 01

 

The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

The wording “Chemical substances for use as food ingredients; probiotic compositions for use as ingredients in the manufacture of food and beverages; chemical and organic compositions for use in the manufacture of food and beverages; probiotic compositions for use as ingredients in the manufacture of food and beverages; probiotic compositions for use as ingredients in the manufacture of food and beverages; chemical and chemical substances including protein products; chemicals and chemical substances including dairy by-products; adhesives for use in the foodstuffs industry; milk ferments for chemical purposes; bacteriological preparations, other than for medical and veterinary use;  filtering preparations for the beverage and food industries

 

The identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Class 05

 

The wording “nutritional additives, namely, food additives for use in the food and pharmaceutical industry as dietary supplements for humans in the nature of extracts derived from milk, for babies and infants” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Generally, food additives for use in the food industry are in Class 01.

 

Class 29

 

The wording “milk proteins for food and beverages; milk proteins for human consumption” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass the raw material “protein” in Class 01 or “protein milk”, a milk that is richer in protein and lower in fat than ordinary milk, in Class 29.

 

Applicant has classified “milk protein powders for human consumption for use as a food additive; whey protein for use as a food additive; whey protein isolate for use as a food additive; milk protein caseinate for use as a food additive” in International Class 29; however, proteins are no longer considered “food” for classification purposes.   Instead, proteins are considered raw materials used in the industrial preparation of food for their nutritive values or, e.g., as emulsifiers or binding agents, in Class 1, or as a dietary supplement in Class 5.  Therefore applicant must clarify the nature and purpose of these goods and classify them accordingly.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “milk protein concentrates” in the identification of goods is indefinite and must be clarified because it does not make clear the nature and/or purpose of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font): 

 

Class 01: Chemical substances for use as food ingredients in the nature of chemical additives for use in the manufacture of food; chemical and organic compositions for use in the manufacture of food and beverages, namely, {provide generic name of chemicals, e.g., pectin, lecithin, cream of tartar, gluten, etc.}; probiotic compositions for use as ingredients in the manufacture of food and beverages, namely, {provide generic name of goods, e.g., probiotic bacteria and probiotic bacterial cultures}; casein for the food and beverage industry; lactose for the food industry; chemical and chemical substances, namely, proteins for the food industry; chemicals and chemical substances, namely, dairy byproducts in the nature of {provide generic name of goods, e.g., lactose for the food industry}; chemical substances for preserving foodstuffs; adhesives to be used in the manufacture of foodstuffs; milk ferments for the food industry; protein for use in the manufacture of {indicate general nature of item, e.g., cosmetics, beverages, food products and food supplements, etc.,}; milk ferments for industrial purposes; bacteria for use in food manufacture; chemical preparations in the nature of filtering materials in the beverage and food industries; oils for the preservation of food; calcium salts; lecithin for the food industry; vitamins for use in the manufacture of food supplements; protein in raw material form for use in the manufacture of food and beverages; milk protein in raw material form for use in the manufacture of food and beverages; whey protein in raw material form for use in the manufacture of food; whey protein isolate in raw material form for use in the manufacture of food; milk protein caseinate in raw material form for use in the manufacture of food and beverages

 

Class 05: Infant formulas, powdered milk for babies and infants, and infant formulas adapted for medical use; dietetic substances, namely, powdered nutritional supplement drink mixes and concentrates for babies and infants, powdered milk for babies and infants, powdered meal replacement drink mixes for babies and infants adapted for medical use; dietetic beverages, namely, supplemental drinks promoting healthy growth, bone health, muscle development, cognitive development, immunity development or allergy and digestive health, for babies and infants; food for babies; food for infants; milk powder for babies; milk powder for infants; nutritional food additives for medical purposes in the nature of natural food extracts derived from milk for babies and infants; none of the foregoing for veterinary animal healthcare; powdered nutritional supplement drink mix containing protein; powdered nutritional supplement concentrate containing milk protein

 

Class 29: Milk powder; whey

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods 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 may not later be reinserted.  See 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.

 

RESPONSE GUIDELINES & PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:

 

Class 01: Chemical substances for use as food ingredients; chemical and organic compositions for use in the manufacture of food and beverages; probiotic compositions for use as ingredients in the manufacture of food and beverages; chemical and chemical substances including protein products; chemicals and chemical substances including dairy by-products; adhesives for use in the foodstuffs industry; milk ferments for chemical purposes; protein (raw material); bacteriological preparations, other than for medical and veterinary use; filtering preparations for the beverage and food industries

 

Class 05: nutritional additives, namely, food additives for use in the food and pharmaceutical industry as dietary supplements for humans in the nature of extracts derived from milk, for babies and infants

 

Class 29: milk proteins for food and beverages; milk protein powders for human consumption for use as a food additive; milk proteins for human consumption; whey protein for use as a food additive; whey protein isolate for use as a food additive; milk protein caseinate for use as a food additive; milk protein concentrates

 

The application will then proceed with the following goods only:

 

Class 01: casein for the food and beverage industry; lactose for the food industry; chemical substances for preserving foodstuffs; milk ferments for the food industry; milk ferments for industrial purposes; oils for the preservation of food; calcium salts; lecithin for the food industry; vitamins for use in the manufacture of food supplements

 

Class 05: Infant formulas, powdered milk for babies and infants, and infant formulas adapted for medical use; dietetic substances, namely, powdered nutritional supplement drink mixes and concentrates for babies and infants, powdered milk for babies and infants, powdered meal replacement drink mixes for babies and infants adapted for medical use; dietetic beverages, namely, supplemental drinks promoting healthy growth, bone health, muscle development, cognitive development, immunity development or allergy and digestive health, for babies and infants; food for babies; food for infants; milk powder for babies; milk powder for infants; none of the foregoing for veterinary animal healthcare

 

Class 29: Milk powder; whey

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  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.  

 

 

 

/Katrina J. Goodwin/

Examining Attorney

Law Office 122

571-272-7605

Katrina.Goodwin@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/20/2019 FOR U.S. APPLICATION SERIAL NO. 88235968

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.