NOTE TO THE FILE
SERIAL NUMBER: 88255532
DATE: 02/18/2019
NAME: rnkojo
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:We are on the road traveling, please proceed with all of your suggestions and issue examiners amendments.
Thank you,
/Paul Hoge/
Shari Millar
-----Original Message-----
From: Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV>
To: sharimillar@aol.com <sharimillar@aol.com>
Sent: Fri, Feb 15, 2019 3:12 pm
Subject: U.S. Trademark Application Serial Nos. 88183558; 88183588; 88255532; 88255546; 88255565Dear Mr. Hoge:
This correspondence is in regards to the following U.S. Trademark Applications:
Serial No. 88183558 for the mark “JAMMIN’ JELLY”
Serial No. 88183588 for the mark “ GROOV’N GRAPE”
Serial No. 88255532 for the mark “PEACE RIVER”
Serial No. 88255546 for the mark “WOOFSTOCK”
Serial No. 88255565 for the mark “FURRY TAILS”
Thank you for the above-referenced applications to the U.S. Patent and Trademark Office. I reviewed them and there are a few minor issues that we can resolve by Examiner’s Amendment and I can then approve them for publication right away. If you would like to discuss the below via telephone, I am available to do so Tuesday, February 19th between the hours of 9am and 12pm EST.
DISCLAIMER REQUIREMENT
For the applied-for mark “GROOV’N GRAPE”, the wording “GRAPE” should be disclaimed because it is a descriptive feature of the goods. Specifically the wording describes the featured ingredient and/or scent of the goods. See http://www.candlevision.com/groovn-grape-odor-eliminator-candle/; http://www.candlevision.com/groovn-grape-odor-eliminator-spray/ (Applicant’s goods being advertised as goods that feature “juicy notes of red and black grapes”). While you still have exclusive rights to the entire mark, the Office does not allow applicants to claim exclusive rights to terms that others may need to describe their own services. For example, the owner of “Smith Grocery Store” may not claim exclusive rights to “Grocery Store” because other stores need to use that phrase to describe their own store.
Therefore, please let me know if you agree to the following statement being added to the application record:
For Application Serial No. 88183588: “No claim is made to the exclusive right to use “GRAPE” apart from the mark as shown”.
REQUIREMENT – AMEND IDENTIFICATION OF GOODS
For the following Application Serial Nos., applicant must amend the identification of goods in both International Classes 4 and 5.
Serial No. 88183558 for the mark “JAMMIN’ JELLY”
Serial No. 88183588 for the mark “ GROOV’N GRAPE”
Serial No. 88255532 for the mark “PEACE RIVER”
Serial No. 88255546 for the mark “WOOFSTOCK”
Serial No. 88255565 for the mark “FURRY TAILS”
All of the identifications of goods for the above-referenced applications are identical. Thus, the following requirements are applicable to all of the above-referenced applications.
International Class 4
The wording “candles, fragrant wax, for use in potpourri burners” requires amendment of the use of the comma punctuation because it is unclear whether applicant intends to offer two distinct goods, i.e., “candles” and “fragrant wax”. Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). 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. Therefore, applicant must amend the identification to replace the comma with a semi-colon to properly distinguish the goods.
International Class 5
The wording “…odor exterminating air and room fresheners and deodorizers…” 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 air freshening preparations classified in International Class 3 and air deodorizing preparations classified in International Class 5. Thus, the wording “air and room fresheners” is no longer acceptable as a definite identification of goods. Therefore, in order to allow proper classification in International Class 5, applicant must amend the identification to either replace the wording “fresheners” with “deodorizers”, “deodorizing preparations”, “deodorizing compositions” and/or “deodorants”, or amend the identification to clarify the nature of the goods using these terms.
Applicant should be aware that it may amend the identification to clarify or limit the goods, 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).
Accordingly, for all of the above-referenced application Serial Numbers, applicant may adopt the following wording and punctuation, specified in bold, if accurate:
International Class 4: Candles; fragrant wax for use in potpourri burners;
International Class 5: Deodorizer other than for personal use, namely, odor exterminating air and room fresheners and deodorizers in the nature of [clarify nature of the goods using terms that describe the type of goods classified in International Class 5, e.g., air deodorizing preparations, air deodorizers, room deodorizing compositions, and room deodorants] for auto, home, interiors, fabrics, upholstery, carpet, air, vehicle, boat, motor home, camper, household, office, building, hotels and motels use.
RESPONSE GUIDELINES
If the above-referenced disclaimer statement and amended identifications of goods are acceptable to you, I can make the changes myself with an “Examiner’s Amendment”. I would simply need approval by email or telephone at the number below, from you, the applicant and authorized signatory of the applications.
If, however, you would like to discuss further, to expedite processing, we can schedule a phone call for anytime Tuesday, February 19th, between 9am and 12pm EST to hopefully resolve the issues for immediate approval for publication. The Office is closed on Monday in observance of the President’s Day federal holiday. However, I will be checking email throughout the weekend as well as on Monday. Please feel free to respond via email with your approval of the above-referenced changes or with any questions or concerns you may have regarding the above. I would like to discuss resolution of these issues by Tuesday, February 19th. However if you are unavailable prior to February 19th, then I can issue an Office Action to you and you will have 6 months to respond.
Thank you for your time,
Rhoda
Rhoda Nkojo
Trademark Attorney - Law Office 117
United States Patent & Trademark Office
(PH): (571) 272-8468
(Email): rhoda.nkojo@uspto.gov
Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP Sections 705.02, 709.06.