To: | FONTERRA TM LIMITED (williamjseiter@seiterlegalstudio.com) |
Subject: | U.S. Trademark Application Serial No. 88235968 - SURELIFE - N/A |
Sent: | July 19, 2019 04:53:19 PM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88235968
Mark: SURELIFE
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Correspondence Address: 2500 BROADWAY, BLDG F, SUITE F-125
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Applicant: FONTERRA TM LIMITED
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Reference/Docket No. N/A
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 19, 2019
This Office action is in response to applicant’s communication filed on 7.2.2019.
In a previous Office action dated 3.20.2019, applicant was required to satisfy the following requirement: amend the identification of goods.
The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
REQUIREMENT TO PROVIDE AN ACCEPTABLE IDENTIFICATION OF GOODS
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Accordingly, the following is suggested and may be adopted (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, beverages and supplements; chemical and organic compositions for use in the manufacture of food and beverages, namely, milk proteins; probiotic compositions for use as ingredients in the manufacture of food and beverages, namely, 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 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 beverages, food products and food supplements; milk ferments for industrial purposes; bacteria for use in food and supplement 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, beverages, and supplements; milk protein in raw material form for use in the manufacture of food, beverages and supplements; whey protein in raw material form for use in the manufacture of food, beverages and supplements; whey protein isolate in raw material form for use in the manufacture of food, beverages and supplements; milk protein caseinate in raw material form for use in the manufacture of food, beverages and 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; 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
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.
Conclusion
Because applicant failed to provide an acceptable identification of goods, the requirement is maintained and now made FINAL.
PROPER RESPONSE TO FINAL REFUSAL & PARTIAL ABANDONMENT ADVISORY
Class 01: Chemical substances for use as food ingredients in the nature of chemical additives for use in the manufacture of food, beverages or supplements
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following goods:
Class 01: chemical and organic compositions for use in the manufacture of food and beverages, namely, milk proteins; probiotic compositions for use as ingredients in the manufacture of food and beverages, namely, 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 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 beverages, food products and food supplements; milk ferments for industrial purposes; bacteria for use in food and supplement 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, beverages, and supplements; milk protein in raw material form for use in the manufacture of food, beverages and supplements; whey protein in raw material form for use in the manufacture of food, beverages and supplements; whey protein isolate in raw material form for use in the manufacture of food, beverages and supplements; milk protein caseinate in raw material form for use in the manufacture of food, beverages and 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; 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 respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Katrina J. Goodwin/
Examining Attorney
Law Office 122
571-272-7605
Katrina.Goodwin@uspto.gov
RESPONSE GUIDANCE