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: 3/5/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

SUMMARY OF ISSUES:

·       Requirement:  Disclaimer of Descriptive Wording

·       Requirement:  Amended Identification of Goods

 

REQUIREMENT:  DISCLAIMER OF DESCRIPTIVE WORDING

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “KIDS BRANDS” because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from English Oxford Living Dictionaries shows the wording “KIDS” means “a child or young person” and the wording “BRANDS” means “a type of product manufactured by a particular company under a particular name.”  Thus, the wording “KIDS BRANDS” merely describes features of applicant’s goods.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “KIDS BRANDS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

REQUIREMENT:  AMENDED IDENTIFICATION OF GOODS

 

International Class 16

 

The wording “changing pads of paper” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant must clarify the wording “disposable dry washcloths, namely, disposable wipes not impregnated with chemicals or compounds” in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  Applicant may substitute the following wording in International Class 21, if accurate:  “disposable dry washcloths, namely, non-woven disposable textile wipes not impregnated with chemicals or compounds.”

 

International Class 20

 

The wording “clothes hampers” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, the goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 21.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 21

 

The wording “brush and comb sets” in the identification of goods is indefinite and must be clarified because the nature of the goods is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 24

 

The wording “lap pads” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in Class 24 for “diaper changing pads not of paper.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

International Class 28

 

First, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods in Class 28.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

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. 

 

In this case, applicant must amend the application to separate distinct goods with semicolons in International Class 28.

 

The wording “toy figurines” in the identification of goods is indefinite and must be clarified because the nature of the goods is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “foam toys” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “toy blocks” in the identification of goods is indefinite and must be clarified because the nature of the goods must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “cribbage sets” in the identification of goods is indefinite and must be clarified because the nature of the sets must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “educational games” in the identification of goods is indefinite and must be clarified because the type of educational games must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “toy globes” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The identification for “toy educational play sets and kits” is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components of the kit, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

Applicant must clarify the wording “toy arts and crafts sets” in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “arts and craft clay kits” and “arts and craft paint kits” are in International Class 16 and “arts and craft loom kits” are in International Class 28. 

 

The wording “novelty lamp play sets” in the identification of goods is indefinite and must be clarified because the nature of the lamp play sets is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “toy projectors” in the identification of goods is indefinite and must be clarified because the nature of the goods is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The identification for “toy model kits” is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Hobby craft kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to specify more clearly the majority of the kit’s components or the type of kit being made, so as to enable appropriate classification, using the guidelines below.  See id.

 

For hobby craft kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a hobby craft kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “Halloween hobby craft kits comprised of permanent markers, printed sewing patterns, stencils, fabric glue for household use and felt cloth” is classified in International Class 16, the class of the primary components (i.e., permanent markers, printed sewing patterns, stencils, and fabric glue for household use) which are listed first in the list of kit components.

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “Halloween hobby craft kits comprised of permanent markers and felt cloth” are in International Class 16 (the class for “permanent markers”), and “Halloween hobby craft kits comprised of felt cloth and permanent markers” are in International Class 24 (the class for “felt cloth”).

 

For hobby craft kits that make a particular product, the identification must specify the product being made using the following format:  “hobby craft kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “hobby craft kits for making toy model houses comprising wooden craft sticks and craft glue for stationery or household purposes” is classified in International Class 28, the class for toy models, even though the individual components would be classified in other classes (e.g., wooden craft sticks in International Class 20 and craft glue for stationery or household purposes in International Class 16).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

The wording “multiple activity toys” in the identification of goods is indefinite and must be clarified because the user of the goods must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “sand pails, sand molds, sand shovels, sand buckets, sand scoops, water sprinklers” in the identification of goods is indefinite and must be clarified because the nature of the goods must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

APPLICANT MAY ADOPT THE FOLLOWING WORDING, IF ACCURATE, WITH CHANGES IN BOLD AND DELETIONS IN STRIKETHROUGH:

 

International Class 16:  “diaper sacks, namely, plastic disposable diaper bags; disposable diaper sacks, namely, plastic bags for disposable diapers; diaper trash bags; disposable diaper changing pads; diaper changing pads of paper; disposable multi-use pads, namely, disposable pads for changing diapers, paper pads for changing diapers, burp pads of paper, disposable table pads of paper for changing diapers, disposable lap pads of paper; paper pads for changing diapers; paper baby bibs; bibs of paper; disposable dry washcloths, namely, disposable wipes not impregnated with chemicals or compounds; arts and craft clay kits; arts and craft paint kits; children’s arts and crafts paper kits.”

 

International Class 20:  “baby walkers; infant walkers; playpens and play yards for babies, infants, and children; high chairs; fitted covers for high chairs; booster seats; baby and infant rockers; baby and infant bouncers; bassinets; plastic novelty signs; clothes hampers.”

 

International Class 21:  “toothbrush sets comprised of toothbrushes and toothpaste; infant toothbrushes; toddler toothbrushes; baby and infant hair brush and comb sets; mini hair brushes; disposable dry washcloth, namely, non-woven disposable textile wipes not impregnated with chemicals or compounds; disposable cleaning cloths not being impregnated; clothes hampers, namely, laundry hampers for domestic or household use.”

 

International Class 24:  “diaper changing pads not of paper; nursing scarves being nursing covers; multi-use pads, namely, diaper changing pads not of paper, table pads, burp pads not of paper, baby lap pads; crib bumpers; diaper changing pads not of paper; dresser table diaper changing pads; dresser table baby changing pads not of paper; cradle pads; bassinet pads; diaper changing pad covers not of paper; burp cloths; table pads, burp pads not of paper, baby lap pads.”

 

International Class 28:  “toys, games, and playthings, namely, stuffed toys, plush toys, plush and stuffed animals, ride-on toys and vehicles, dolls and accessories therefor, doll play sets, doll houses, action figures and accessories therefor, toy figures, molded plastic toy figurines, toy animals, plastic character toys, play sets for action figures; toy figures; molded plastic toy figurines; toy animals; plastic character toys; toy vehicles; play sets for toy vehicles; accessories for toy vehicles; mechanical action toys; electronic action toys; construction toys; toy construction sets; role playing toys and games; play sets and play accessories for children to imitate real life occupations; toy mobiles; baby and infant rattles; nesting and stacking toys; toy shape sorters; toy shovels; children's pounding benches; foam shape sorting toys; toy foam blocks; toy foam floor games; toy building blocks; toy construction blocks; crib toys; toys attachable to car seats, strollers, cribs, and high chairs; push and pull toys; musical toys; toy musical instruments; board games; parlor games; card games; checkers games; chess games; backgammon games; dominoes; domino sets; cribbage sets, namely, cribbage boards and cribbage pegs; puzzles; educational card games; children’s educational games for developing {indicate skills, e.g., fine motor, cognitive, counting skills, etc.}; marbles; dice games; mah jong games; arcade games; arcade-type electronic video games; party games; action skill games; toy telescopes; toy water globes; toy snow globes; toy microscopes; toy metal detectors; toy binoculars; toy magnifying glasses; toy educational play sets and kits comprised of {specify components of kits};toy arts and crafts loom kits sets; novelty lamp play sets containing novelty lamps that have liquid globules which circulate when lamp is in operation; toy projectors that project lights, lasers, and images; decorative wind spinners; spinning tops; toy light sticks; toy model kits for making {specify item} comprising {specify components}; toy soothers that attach to a crib; play mats containing infant toys; children’s multiple activity toys; baby multiple activity toys; children's multiple activity tables; bath toys; toy boxes; outdoor play toys, namely, sand pails, sand molds, sand shovels, sand buckets, sand scoops, water sprinklers; toy swords; sling shots; inflatable inner tubes for aquatic recreational use; boomerangs; play swimming pools; water slides; pet toys; games for pets, namely, ball games for pets, tug games for pets, treat-dispensing games; non-edible pet chew toys.”

 

The identification of goods in International Class 12 is acceptable as written in the application.

 

Applicant 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).

 

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.

 

RESPONSE GUIDELINES:

 

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 requirements 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. 

 

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.  

 

 

 

/Hannah Gilbert/

Examining Attorney

Law Office 121

(571) 272-5029

hannah.gilbert@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 3/5/2019 FOR U.S. APPLICATION SERIAL NO. 88288610

 

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 3/5/2019 (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.