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: 3/25/2019

 

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.  

 

 

INTRODUCTION

 

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 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).

 

However, applicant must address the following refusal(s) and/or requirement(s):

 

SUMMARY OF ISSUES:

• CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS
• ADVISORY:  APPLICATION TRANSLATION STATEMENT WILL NOT BE PRINTED

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

 

CLASSIFICATION OF GOODS

Applicant has classified “Bread containing red ginseng ingredients;” and “Candies with red ginseng ingredients;” in International Class 35; however, the proper classification is International Class 30 for these goods.  Therefore, applicant may respond by (1) adding International Class 30 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “Bread containing red ginseng ingredients;” and “Candies with red ginseng ingredients;” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES

The wording “Wholesale store services featuring processed red ginseng products; Retail store services featuring processed red ginseng products;” in the application identification is acceptable as written.  In addition, the wording “Retail store services featuring mineral water; Retail store services featuring waters, beverages;” in the application identification is acceptable as written.  However, applicant should indicate “and beverages” or “water being beverages” accordingly so the identification is clear and grammatically precise.

 

However, the rest of the wording in the identification of services is indefinite and must be clarified because the wording does not set forth properly the common commercial name for any of the services.  In particular, the wording wholesaler, retail, sales agency franchise, retail processing, and/or sales business services as used in the identifications does not set forth the common commercial name for the services with enough specificity for proper identification and classification of the services in International Class 35.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should note that franchise type services may be classified in International Classes 35, 42 or 45 depending on the nature of the services by common commercial name.  See attached information from the U.S. Acceptable Identification of Goods and Services Manual related to franchise services as well as retail and wholesale for additional possible acceptable identifications related to this indefinite wording.  In addition, applicant must not use “/” in the identifications.  Overall, 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.

 

The examining attorney notes that applicant may wish to indicate “wholesale distributorships featuring” instead of “wholesale store services featuring” with respect to the suggested identification below.

 

In addition, given the redundancy of many of the services but/for the different featured goods, applicant may wish to consolidate the like services listing the different featured goods for a more clear and concise identification of the services.

 

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 may substitute the following wording, if accurate: 

 

Bread containing red ginseng ingredients; Candies with red ginseng ingredients, International Class 30; and/or

 

Wholesale store services featuring red ginseng; Retail store services featuring red ginseng; Red ginseng sales agency franchise services, namely, offering business management assistance in the establishment and operation of retail stores featuring red ginseng; Red ginseng sales business, namely, retail store services featuring red ginseng; Red ginseng sales agency, namely, retail store services featuring red ginseng;  Wholesale store services featuring processed red ginseng products; Retail store services featuring processed red ginseng products; Red ginseng processed food sales agency franchise services, namely, offering business management assistance in the establishment and operation of retail stores featuring red ginseng; Red ginseng processed food sales arrangement franchise services, namely, offering business management assistance in the establishment and operation of retail stores featuring red ginseng; Sales agency services for processed red ginseng products, namely, offering business management assistance in the establishment and operation of retail stores featuring red ginseng; Sales arranging of processed red ginseng products, namely, wholesale store services featuring red ginseng products; Sales of health functional food sales agency franchise main ingredient of red ginseng services, namely, (indicate common commercial name for services properly classified in this class); Sales of health functional foods with red ginseng as main ingredient, namely, retail store services featuring health functional foods with red ginseng as the main ingredient; Health functional foods sale ginseng franchise main ingredient red ginseng, namely, (indicate common commercial name for services properly classified in this class); Wholesale store services featuring health functional foods based on red ginseng; Retail store services featuring health functional foods with the main ingredient of red ginseng; Sales of health functional food sales centered on red ginseng, namely, retail store services featuring health functional food centered on red ginseng; Retail store services featuring red ginseng ingredients;  Retail store services featuring pharmaceuticals containing red ginseng ingredients; Wholesale store services featuring of medicines containing red ginseng; Wholesale services by direct solicitation by sales agents in the field of red ginseng; Retail store services featuring pharmaceutical products containing red ginseng ingredients; Sales of medicines containing red ginseng ingredients in connection with an arrangement franchise, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring medicines containing red ginseng ingredients; Retail store services featuring processed grain with red ginseng ingredients; Franchise sales of grain processed foods containing red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class); Retail stores services featuring grain processed foods containing red ginseng ingredients; Wholesale store services featuring grain processed foods containing red ginseng ingredients; Retail processing of grain processed foods containing red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring grain processed food containing red ginseng ingredients; Grain-processed foods that contain red ginseng ingredients Arinsen franchise services, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring red ginseng ingredients; Retail store services featuring honey containing red ginseng; Retail store services featuring honey with red ginseng ingredients; Wholesale store services featuring honey with red ginseng ingredient; Retail services and wholesale services by direct solicitation by sales agents in the field of honey with red ginseng ingredients; Retail store services featuring honey containing red ginseng ingredients; Sales of honey containing red ginseng ingredients being an arrangement franchise, namely, (indicate common commercial name for services properly classified in this class); Retail processing of processed marine products containing red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class);  Wholesale store services featuring processed, frozen, dried, and cooked fruits and vegetables containing red ginseng ingredients; Retail store services featuring processed frozen, dried, and cooked fruits and vegetables containing red ginseng ingredients; On-line retail store services featuring processed, frozen, dried, and cooked fruits and vegetables containing red ginseng ingredients; Wholesale food distributorships featuring processed, frozen, dried and cooked fruits and vegetables containing red ginseng ingredients; Processed, frozen, dried and cooked fruits and vegetables containing red ginseng ingredients in the nature of arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class);  franchise sales of processed and frozen, dried, and cooked fruits and vegetables containing red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class);  Retail store services featuring mineral water; Retail store services featuring waters, and beverages; Wholesale store services featuring red ginseng ingredients; Wholesale store services featuring bread containing red ginseng ingredients; Wholesale store services featuring red ginseng chocolate; Wholesale store services featuring candy containing red ginseng ingredient; Wholeslae store services featuring ice cream with red ginseng ingredient; Retail store services featuring sweets with red ginseng ingredients; Retail store services featuring chocolate retail with red ginseng ingredients; Retail store services featuring sweets containing red ginseng ingredients; Retail store services featuring red ginseng bread; Retail store services featuring chocolate containing red ginseng ingredients; Retail stores services featuring candy containing red ginseng ingredients; Retail store services featuring ice cream containing red ginseng ingredients; Confectionery sales franchise with red ginseng ingredients services, namely, (indicate common commercial name for services properly classified in this class); Bread sales of red ginseng ingredients arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of chocolate containing red ginseng ingredients arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of candy containing red ginseng ingredients arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class); Ice cream sales with red ginseng ingredients arrangement franchise service, namely, (indicate common commercial name for services properly classified in this class); Sweets sales agency franchise with red ginseng ingredients services, namely, (indicate common commercial name for services properly classified in this class); Bread containing red ginseng sales agency franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of chocolate containing red ginseng franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of red ginseng candy franchise services, namely, (indicate common commercial name for services properly classified in this class); Ice cream sales agent franchise services with red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring confectionery containing red ginseng ingredients; Retail store services featuring bread of red ginseng ingredients; Retail store services featuring chocolate containing red ginseng ingredients; Retail store services featuring candy containing red ginseng ingredients; Retail store services featuring ice cream with red ginseng ingredients; Preserved seaweed edible seaweed franchise with red ginseng ingredients services, namely, (indicate common commercial name for services properly classified in this class); Seaweed processed food sales agency franchise with red ginseng ingredients services, namely, (indicate common commercial name for services properly classified in this class):  Retail store services featuring preserved edible seaweed containing red ginseng ingredients; Retail store services featuring seaweed processed food containing red ginseng ingredients; Preserved edible seaweed sales of red ginseng ingredients arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class); Seaweed processed foods that contain red ginseng ingredients arinsen franchise services, namely, (indicate common commercial name for services properly classified in this class); Wholesale store services featuring preserved edible seaweed containing red ginseng ingredients; Wholesale store services featuring seaweed processed foods containing red ginseng ingredients; Retail store services featuring preserved edible seaweed containing red ginseng ingredients; Retail store services featuring seaweed processed foods containing red ginseng ingredients; Retail store services featuring edible seaweed containing red ginseng ingredients; Retail processing of seaweed processed with red ginseng ingredients, namely, (indicate common commercial name for services properly classified in this class); Wholesale store services featuring tea with red ginseng ingredient tea wholesalers; Retail store services featuring tea with red ginseng ingredients; On-line retail store services featuring tea containing red ginseng ingredients; Retail store services featuring tea containing red ginseng ingredients; Wholesale store services featuring tea drinks containing red ginseng ingredients; Wholesale store services featuring soft drinks containing red ginseng; Wholesale store services featuring of foamable beverage ingredients containing red ginseng ingredients; Wholesale store services featuring non-alcoholic beverage containing red ginseng ingredients; Retail store services featuring tea drinks containing red ginseng ingredients; Retail store services featuring soft drinks containing red ginseng; Retail store services featuring foamable beverage ingredients containing red ginseng ingredients; Retail store services featuring non-alcoholic beverages containing red ginseng ingredient; Tea drinks with red ginseng ingredients sales agency franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of soft drinks containing red ginseng franchise services, namely, (indicate common commercial name for services properly classified in this class); Foaming beverage ingredients containing red ginseng ingredients sales agency franchise service, namely, (indicate common commercial name for services properly classified in this class); Non-alcoholic beverage with red ginseng sales agency franchise service, namely, (indicate common commercial name for services properly classified in this class); Tea drink containing red ginseng ingredients sales franchise services, namely, (indicate common commercial name for services properly classified in this class); Sales of soft drink containing red ginseng ingredients arrangement franchise, namely, (indicate common commercial name for services properly classified in this class); Fossil beverage ingredients containing red ginseng ingredients sales franchisees services, namely, (indicate common commercial name for services properly classified in this class); Non-alcoholic beverages with red ginseng ingredients sales franchise, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring tea drinks containing red ginseng ingredients; Retail store services featuring soft drinks containing red ginseng ingredients; Wholesale services and retail services by direct solicitation by sales agents for foamable beverage containing red ginseng ingredient; Retail store services featuring non-alcoholic beverages containing red ginseng ingredients; Retail store services featuring tea drinks containing red ginseng ingredients; Retail store services featuring soft drinks containing red ginseng ingredients; Retail store services featuring sparkling beverage ingredients containing red ginseng ingredients; Retail store services featuring non-alcoholic beverages containing red ginseng ingredients; Wholesale store services featuring coffee containing red ginseng ingredients wholesalers; Wholesale store services featuring cocoa with red ginseng ingredient; Retail store services featuring coffee with red ginseng ingredients; Retail store services featuring cocoa with red ginseng ingredients; Franchise sales of coffee containing red ginseng ingredients services, namely, (indicate common commercial name for services properly classified in this class); Wholesale services and retail services by direct solicitation by sales agents in the field of cocoa with red ginseng ingredients; Coffee with ingredients of red ginseng sales franchise services, namely, (indicate common commercial name for services properly classified in this class); Cocoa sales of red ginseng ingredients arrangement franchise services, namely, (indicate common commercial name for services properly classified in this class); Retail store services featuring coffee containing red ginseng ingredients; Retail store services featuring cocoa containing red ginseng ingredients;  Retail store services featuring coffee containing red ginseng ingredients; Retail store services featuring cocoa containing red ginseng ingredients, International Class 35; and/or

 

Red ginseng sales agency franchise services, namely, planning and design of information technology systems for business franchises related to the selling red ginseng, International Class 42; and/or

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

ADVISORY:  APPLICATION TRANSLATION STATEMENT WILL NOT BE PRINTED

 

Applicant is advised that the translation statement set forth in the application will not be printed because the wording in the mark is not entirely comprised of non-English wording which requires a translation, but is comprised of three English letters. TMEP §809.  Applicant does not need to respond to this issue.

 

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. 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@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 3/25/2019 FOR U.S. APPLICATION SERIAL NO. 88248586

 

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 3/25/2019 (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.