To: | TRU Kids Inc. (spitz@blankrome.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88288610 - TRU KIDS BRANDS - 119590-00109 |
Sent: | 3/5/2019 10:41:15 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88288610
MARK: TRU KIDS BRANDS
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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: TRU Kids Inc.
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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: 3/5/2019
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).
· Requirement: Disclaimer of Descriptive Wording
· Requirement: Amended Identification of Goods
REQUIREMENT: DISCLAIMER OF DESCRIPTIVE WORDING
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.
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.
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
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.
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).
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).
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.
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:
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.