To: | Sambonet Paderno Industrie S.p.A. (fbraga@perani.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88249637 - PADERNO - T023050/pl |
Sent: | 3/23/2019 12:08:30 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88249637
MARK: PADERNO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sambonet Paderno Industrie S.p.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/23/2019
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.
DATABASE SEARCH – NO CONFLICTING 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).
IDENTIFICATION AND CLASSIFICATION OF GOODS & SERVICES (Partial)
The goods are:
Class 8: Kitchen tools and accessories, namely, non-electric food slicers, hand-operated bread, cheese, meat, fruit, vegetable, biscuit and pizza slicers; cleavers; flatware, namely, spoons for tea and coffee, knives, forks and spoons; salad forks; hand tools, namely, lobster and crab shell crackers; kitchen mallet for lobster and crabs; household knives; knives for cutting biscuits; bread knives; butcher knives; chef knives; meat knives; butter knives; ceramic knives; cheese knives; fruit knives; meat tenderizers, namely, a kitchen mallet; non-electric can openers; table flatware, namely, spoons for coffee and tea, knives, forks and spoons, composed of silver, silver-plated, or stainless steel; pizza cutters; cake cutters; boxes specially adapted for the storage of cutlery and flatware; non-electric meat and garlic choppers; non-electric fruit peelers; non-electric potato peelers; non-electric vegetable peelers; oyster openers; scissors for kitchen use; all the foregoing sold in the horeca channel
Class 21: Articles made of glass, porcelain and majolica, namely, bottles sold empty, cups, plates, pots, cookie jars, vases for flowers; glassware, namely, drinking glasses, wine glasses, beer glasses; glass jars; kitchen tools and accessories, namely, bottle openers, jar openers, ice cream scoops, tongs, sugar tongs, ice tongs, bread and pastry tongs, whisks, food basters, butter coolers; knife blocks; bar serving items, namely, ice buckets, cocktail shakers, cocktail strainers, cork screws; forks and spoons for serving and mixing; pasta serving forks and spoons; kitchen ladles; serving platters; serving trays; cooking utensils, namely, cooking pots, frying pans, roasting pans, steam cookers, saucepans for steam cooking, kettles, all these goods being non-electrical; casserole pots; oval casseroles; round oven casseroles; containers for household and kitchen use; cooking skewers; colanders; cooking strainers for pasta; grills in the nature of cooking utensils; steamer baskets; cookware for use in microwave ovens; Dutch ovens; stew pots for use in ovens; metal containers for baking purposes, namely, cake pans, pizza pans; cake molds; rolling pins; pizza peels; sieves; roasting dishes; roasting dishes made of terra cotta; cooking dishes for microwave ovens; fish and meat dishes and relevant covers; vegetable dishes; butter-dish and cheese-dish covers; deep saucepots; deep stew-pans; omelet pans; egg cups; egg poachers; egg separators non electric, for household purposes; empty spray bottles; anti-splatter devices, namely, splatter screens; cutting boards; wooden cutting boards; plastic cutting boards; fruit baskets sold empty; funnels; gravy boats; skillets; hand-operated spice grinders; manual graters for spices, cheese, fruits and vegetables; household utensils, namely, mixing spoons, spatulas and pot and pan scrapers; ice bowls; ice cream stands; insulated beverage servers; lemon squeezers; non-electric milk boilers; non-electric tea boilers; coffee maker non-electric; non-electric food mixers; non-electric domestic utensils, namely, citrus-fruit squeezers, juice extractors; non-electric fruit squeezers; non-electric pressure cookers; non-electric woks; non-electric deep fryers; non-electric non-stick pressure cookers; non-electric vegetable steamers; waffle irons; non-stick casseroles; non-stick containers for storing and cooking food; non-stick cooking pans; non-stick cooking pots; non-stick frying pans; non-stick stew pans; vegetable mashers; oil and vinegar sets sold empty; hand-operated pepper mills; salt and pepper shakers; toothpicks; salad spinners; small utensils and portable containers, for household and kitchen use, namely, soup bowls, sauce bowls, small cups, mugs, sugar containers, carafes, jugs; toothpick holders, lids for pots, spoon rests; napkin holders; napkin rings; chopstick stands; plates, trays for domestic purposes; dinnerware, namely, plates, cups and saucers; coffee and tea services in the nature of tableware; tea filters, namely, infusers; teapots; tea strainers; stirring rods for beverages; vacuum bottles; chopsticks; creamer pitchers; water pitchers; basins in the nature of bowls; pastry and basting brushes; spare glass inserts for trays; camping grills; portable pots and pans for camping; portable cooking kits for outdoor use; utensils for barbecues, namely, forks, tongs, turners; instruments and materials for cleaning, namely, steel wool; cleaning brushes for household use; cleaning implements and materials, namely, cleaning cloths; floor brushes; sponges for household purposes; buckets; cleaning brushes for household use; washing brushes; oven mitts; all the foregoing sold in the horeca channel
Some of the wording in the identification of goods, highlighted in bold type, above, is indefinite because it does not clearly specify the nature, function, or purpose of the goods. Applicant must amend to description to clarify, as appropriate, the nature, intended consumers, main purpose, and intended uses of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In addition, the underlined goods are misclassified or are described so broadly that they implicate multiple international classes. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b), 1402.03 et seq. Accordingly, applicant must amend the application to delete, reword, and/or re-classify the goods as indicated below. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b), 1402.03 et seq.
The identification of goods in International Class 21 includes a duplicate entry of the wording “cleaning brushes for household use” and clarification is required. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(a). Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry. See TMEP §§1402.01, 1402.01(a). If modifying one of the duplicate identifications, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
Applicant may adopt the following identification and classifications, if accurate:
Class 21: Articles made of glass, porcelain and majolica, namely, bottles
sold empty, cups, plates, pots, cookie jars, vases for flowers; glassware, namely, drinking glasses, wine glasses, beer glasses; glass jars; kitchen tools and accessories, namely, bottle openers, jar
openers, ice cream scoops, tongs, sugar tongs, ice tongs, bread and pastry tongs, whisks, food basters, butter coolers; knife blocks; bar serving items, namely, ice buckets, cocktail shakers,
cocktail strainers, cork screws; forks and spoons for serving and mixing; pasta serving forks and spoons; kitchen ladles; serving platters; serving trays; cooking utensils, namely, cooking pots,
frying pans, roasting pans, steam cookers, saucepans for steam cooking, kettles, all these goods being non-electrical; casserole pots; oval casseroles; round oven casseroles; containers for household
and kitchen use; cooking skewers; colanders; cooking strainers for pasta; grills in the nature of cooking utensils; steamer baskets; cookware for use in microwave ovens; Dutch ovens; stew pots for
use in ovens; metal containers for baking purposes, namely, cake pans, pizza pans; cake molds; rolling pins; pizza peels; sieves; roasting dishes; roasting dishes made of terra cotta; cooking dishes
for microwave ovens; fish and meat dishes and relevant covers; vegetable dishes; butter-dish and cheese-dish covers; deep saucepots; deep stew-pans; omelet pans; egg cups; egg poachers; egg
separators non electric, for household purposes; empty spray bottles; anti-splatter devices, namely, splatter screens; cutting boards; wooden cutting boards; plastic cutting boards; fruit baskets
sold empty; funnels; gravy boats; skillets; hand-operated spice grinders; manual graters for spices, cheese, fruits and vegetables; household utensils, namely, mixing spoons, spatulas and pot and pan
scrapers; ice bowls; ice cream stands in the nature of kitchen utensils; insulated beverage servers being
containers; lemon squeezers; non-electric milk boilers; non-electric tea boilers; coffee maker non-electric; non-electric food mixers; non-electric domestic utensils, namely, citrus-fruit
squeezers, juice extractors; non-electric fruit squeezers; non-electric pressure cookers; non-electric woks; non-electric deep fryers; non-electric non-stick pressure cookers; non-electric vegetable
steamers; waffle irons; non-stick casserole dishes; non-stick containers for storing and cooking food; non-stick cooking pans; non-stick cooking pots;
non-stick frying pans; non-stick stew pans; vegetable mashers; oil and vinegar cruet sets sold empty; hand-operated pepper mills; salt and pepper shakers;
toothpicks; salad spinners; small utensils and portable containers, for household and kitchen use, namely, soup bowls, sauce bowls, small cups, mugs, sugar containers, carafes, jugs; toothpick
holders, lids for pots, spoon rests; napkin holders; napkin rings; chopstick stands; plates, trays for domestic purposes; dinnerware, namely, plates, cups and saucers; coffee and tea services in the
nature of tableware; tea filters, namely, infusers; non-electric teapots; tea strainers; stirring rods for beverages; vacuum bottles; chopsticks; creamer
pitchers; water serving pitchers; basins in the nature of bowls; pastry and basting brushes; spare glass inserts for serving trays; camping grills; portable pots and pans for camping; portable cooking kits for outdoor use; utensils for barbecues, namely, forks, tongs, turners; instruments and
materials for cleaning, namely, steel wool; cleaning brushes for household use; cleaning implements and materials, namely, cleaning cloths; floor brushes; sponges for household purposes; buckets;
cleaning brushes for household use; washing brushes; oven mitts; all the foregoing sold in trade channels serving the hotel, restaurant,
and catering industries
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).
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.
PARTIAL ABANDONMENT ADVISORY
If applicant does not timely respond to this Office action, the following goods will be deleted from the application:
Class 8: pizza cutters; the foregoing sold in the horeca channel
Class 21: ice cream stands; insulated beverage servers; non-stick casseroles; oil and vinegar sets sold empty; teapots; water pitchers; spare glass inserts for trays; cleaning brushes for household use; all the foregoing sold in the horeca channel
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following goods only:
Class 8: Kitchen tools and accessories, namely, non-electric food slicers, hand-operated bread, cheese, meat, fruit, vegetable, biscuit and pizza slicers; cleavers; flatware, namely, spoons for tea and coffee, knives, forks and spoons; salad forks; hand tools, namely, lobster and crab shell crackers; kitchen mallet for lobster and crabs; household knives; knives for cutting biscuits; bread knives; butcher knives; chef knives; meat knives; butter knives; ceramic knives; cheese knives; fruit knives; meat tenderizers, namely, a kitchen mallet; non-electric can openers; table flatware, namely, spoons for coffee and tea, knives, forks and spoons, composed of silver, silver-plated, or stainless steel; cake cutters; boxes specially adapted for the storage of cutlery and flatware; non-electric meat and garlic choppers; non-electric fruit peelers; non-electric potato peelers; non-electric vegetable peelers; oyster openers; scissors for kitchen use;
Class 21: Articles made of glass, porcelain and majolica, namely, bottles sold empty, cups, plates, pots, cookie jars, vases for flowers; glassware, namely, drinking glasses, wine glasses, beer glasses; glass jars; kitchen tools and accessories, namely, bottle openers, jar openers, ice cream scoops, tongs, sugar tongs, ice tongs, bread and pastry tongs, whisks, food basters, butter coolers; knife blocks; bar serving items, namely, ice buckets, cocktail shakers, cocktail strainers, cork screws; forks and spoons for serving and mixing; pasta serving forks and spoons; kitchen ladles; serving platters; serving trays; cooking utensils, namely, cooking pots, frying pans, roasting pans, steam cookers, saucepans for steam cooking, kettles, all these goods being non-electrical; casserole pots; oval casseroles; round oven casseroles; containers for household and kitchen use; cooking skewers; colanders; cooking strainers for pasta; grills in the nature of cooking utensils; steamer baskets; cookware for use in microwave ovens; Dutch ovens; stew pots for use in ovens; metal containers for baking purposes, namely, cake pans, pizza pans; cake molds; rolling pins; pizza peels; sieves; roasting dishes; roasting dishes made of terra cotta; cooking dishes for microwave ovens; fish and meat dishes and relevant covers; vegetable dishes; butter-dish and cheese-dish covers; deep saucepots; deep stew-pans; omelet pans; egg cups; egg poachers; egg separators non electric, for household purposes; empty spray bottles; anti-splatter devices, namely, splatter screens; cutting boards; wooden cutting boards; plastic cutting boards; fruit baskets sold empty; funnels; gravy boats; skillets; hand-operated spice grinders; manual graters for spices, cheese, fruits and vegetables; household utensils, namely, mixing spoons, spatulas and pot and pan scrapers; ice bowls; lemon squeezers; non-electric milk boilers; non-electric tea boilers; coffee maker non-electric; non-electric food mixers; non-electric domestic utensils, namely, citrus-fruit squeezers, juice extractors; non-electric fruit squeezers; non-electric pressure cookers; non-electric woks; non-electric deep fryers; non-electric non-stick pressure cookers; non-electric vegetable steamers; waffle irons; non-stick containers for storing and cooking food; non-stick cooking pans; non-stick cooking pots; non-stick frying pans; non-stick stew pans; vegetable mashers; hand-operated pepper mills; salt and pepper shakers; toothpicks; salad spinners; small utensils and portable containers, for household and kitchen use, namely, soup bowls, sauce bowls, small cups, mugs, sugar containers, carafes, jugs; toothpick holders, lids for pots, spoon rests; napkin holders; napkin rings; chopstick stands; plates, trays for domestic purposes; dinnerware, namely, plates, cups and saucers; coffee and tea services in the nature of tableware; tea filters, namely, infusers; tea strainers; stirring rods for beverages; vacuum bottles; chopsticks; creamer pitchers; basins in the nature of bowls; pastry and basting brushes; camping grills; portable pots and pans for camping; portable cooking kits for outdoor use; utensils for barbecues, namely, forks, tongs, turners; instruments and materials for cleaning, namely, steel wool; cleaning brushes for household use; cleaning implements and materials, namely, cleaning cloths; floor brushes; sponges for household purposes; buckets; washing brushes; oven mitts;
See TMEP §718.02(a).
RESPONSE GUIDELINES
CONTACT EXAMINING ATTORNEY
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.
/Roger T. McDorman/
Trademark Examining Attorney
Law Office 109
571-272-5224
roger.mcdorman@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.