Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  May 21, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 21, 2020.

 

In a previous Office action(s) dated April 15, 2020, the trademark examining attorney required applicant to satisfy the following requirement(s):  provide foreign registration.

 

Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s) and refusal(s):  Identification Of Goods For Class 7.  See TMEP §§706, 711.02. 

 

SUMMARY OF:

• Identification Of Goods For Class 7
• Partial Abandonment Advisory

 

IDENTIFICATION OF GOODS FOR CLASS 7

 

The stated refusal refers to the following goods and/or services and does not bar registration for the other goods and/or services:  “Cultivation machines for plants, namely, machines for forcing plants; Seedling culture apparatus.”

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods and/or services as follows:  “Cultivation machines for plants, namely, machines for forcing plants; Seedling culture apparatus.” 

 

However, the foreign registration identifies the following goods and/or services:  “Crop planting machines for agricultural purposes; Vegetable cultivation machines (other than for household purposes); Sprouting machines for agricultural purposes; cultivation machines for plants, namely machine for forcing plants with LED light for agricultural purposes (other than for household purposes); Seedling culture apparatus with LED light for agricultural purposes (other than for household purposes).”

 

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because it expands the goods.  Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)             Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)             Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 7 will be deleted from the application:  “Cultivation machines for plants, namely, machines for forcing plants; Seedling culture apparatus.”  The application will then proceed with the following goods and/or services only:

 

Class 7: Crop planting machines for agricultural purposes; Vegetable cultivation machines other than for household purposes; Sprouting machines for agricultural purposes in the nature of seed sprouters

 

Class 21: Sprout growing containers for household purposes; Plant growth containers for domestic purposes; Hydroponic growing containers for household purposes; Electric vegetable cultivation apparatus for household purposes; Holders for flowers and plants flower arranging, in particular flower pots and flower baskets; Indoor terrariums; Flower pots; Flower pot holders; Sprinklers for watering flowers and plants; Plant cultivation apparatus with in-door LED electric, for household purposes in the nature of plant cultivation trays

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Valerie Kaplan/

Trademark Examining Attorney

Law Office 107

571-272-6767

valerie.kaplan@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 21, 2020 for

U.S. Trademark Application Serial No. 88278845

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Valerie Kaplan/

Trademark Examining Attorney

Law Office 107

571-272-6767

valerie.kaplan@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 21, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”