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:  November 12, 2019

 

PLEASE NOTE, the Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on April 24, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  the multiple-class application requirements must also be satisfied in amending the identification of goods to provide both a definite identification and appropriate classification.  See TMEP §§706, 711.02.

 

In the previous Office action dated April 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1 and 45 for a failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirements: 

 

• provide additional information about the specimen,
• amend the identification of goods (to provide both definite identification entries, as well as appropriate classification of the goods identified), and
• disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  a disclaimer has been provided for the descriptive wording “WOVENS”.  See TMEP §713.02. 

 

In addition, the following refusal(s) and requirement(s) have been satisfied/obviated, and so are withdrawn: 

 

• the Trademark Act Sections 1 and 45 refusal for a failure to show the applied-for mark in use in commerce with any of the specified goods, and
• the requirement to provide additional information about the specimen.  See id. 

 

Accordingly, the following is a SUMMARY OF ISSUES that applicant must address: 

 

• Requirement of Definite Identification and Appropriate Classification
• NEW ISSUE:  Multiple-Class Application Requirements

           

Applicant must respond to all issues raised in this Office action, as well as those maintained/continued from the prior Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REQUIREMENT OF DEFINITE IDENTIFICATION AND APPROPRIATE CLASSIFICATION

 

Certain wording in the identification of goods is indefinite and must be clarified for the reasons discussed below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

As an initial matter, 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.

 

As to the wording of the identification, first, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  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.    

 

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. 

 

And as one example of this, with respect to the identification entry “Printed fabrics, namely, fabrics used in the manufacture of making clothing, crafts being quilting materials, pouches, throw pillows and gift items in the nature of quilting, curtains, pillow covers, upholstery”, the examining attorney is suggesting clarifying this confusingly worded entry into three distinct lists, each proceeded by the introductory phrase “Printed fabrics, namely, fabrics used in the manufacture of . . .”, so that it reads as follows: 

 

Printed fabrics, namely, fabrics used in the manufacture of clothing; printed fabrics, namely, fabrics used in the manufacture of crafts being quilting materials, pouches, and throw pillows; printed fabrics, namely, fabrics used in the manufacture of gift items in the nature of quilting, curtains, pillow covers, and upholstery; . . .

 

See suggested amendment below.

 

Second, applicant’s recent addition of the identification entry of “Dyed yarn fabrics” in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  

 

Printed fabrics, namely, fabrics used in the manufacture of making clothing, crafts and gift items; printed fabrics, namely, cotton, cotton poplin, cotton sheeting, cotton rayon, cotton yarn dyes, poly cotton yarn dyes, cotton flannel, flannel, polycotton flannel, knitted fabrics, jersey material, Batik fabric, hand spun silk fabrics, spun silk fabrics, nylon, polyester, polymicrofiber, polynosic, rayon dobby, silk, wool; over-the-counter fabrics, namely, cotton fabric, silk fabric for use in making wearing apparel, fabric for use in making home furnishings, curtain fabric, fabric for making crafts; fabric for use in making clothing, crafts and gift items; fabric piece goods of wool, cotton, silk, rayon, polyester, nylon and mixtures thereof; cotton fabric; flannel.

 

However, the proposed amendment identifies the following goods:  

 

Dyed yarn fabrics; Printed fabrics, namely, fabrics used in the manufacture of making clothing, crafts being quilting materials, pouches, throw pillows and gift items in the nature of quilting, curtains, pillow covers, upholstery; printed fabrics, namely, cotton, cotton poplin, cotton sheeting being bed sheets, cotton rayon, cotton yarn fabrics, poly cotton yarn fabrics, cotton flannel, flannel, polycotton flannel, knitted fabrics, jersey material, over-the-counter fabrics, namely, cotton fabric, silk fabric for use in making wearing apparel, textile fabric for use in making home furnishings, curtain fabric, cotton, dobby, chambray, homespun, textured fabrics, IKAT, gauze fabric for making crafts; cotton, dobby, linen, chambray, homespun, textured fabrics, IKAT, warp and weft fabric for use in making clothing, crafts and gift items; fabric piece goods in the nature of table runners, unfitted, textile fabrics for home and commercial interiors, hand towels of cotton, silk, rayon, and mixtures thereof; cotton fabric; flannel  

 

(bolded emphasis added by examining attorney for illustrative purposes).  The addition of the entry “dyed yarn fabrics” in the proposed amendment to the identification of goods is beyond the scope of the original identification, because these goods are broader in scope (i.e., the entry encompasses more goods) than any identification entry in the original identification of goods.  A suggested amendment of “dyed cotton yarn fabric” is offered below.  This amendment would be, for example, encompassed within (i.e., within the scope) of the prior identification entry of “cotton fabric.”

 

Third, the wording “printed fabrics, namely, cotton, cotton poplin, cotton sheeting being bed sheets, cotton rayon, cotton yarn fabrics, poly cotton yarn fabrics, cotton flannel, flannel, polycotton flannel, knitted fabrics, jersey material, over-the-counter fabrics, namely, cotton fabric, silk fabric for use in making wearing apparel, textile fabric for use in making home furnishings, curtain fabric, cotton, dobby, chambray, homespun, textured fabrics, IKAT, gauze fabric for making crafts” is too broad and can encompass goods that are in more than one International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, “printed fabrics, namely, printed cotton fabric signage panels” are in International Class 24, but “cotton fibers” are in International Class 22.  Accordingly, applicant should further specify the nature of the goods being referenced, and suggested amendments are offered below.   

 

Similarly, and fourth, the wording “cotton, dobby, linen, chambray, homespun, textured fabrics, IKAT, warp and weft fabric for use in making clothing, crafts and gift items” is too broad and can encompass goods that are in more than one International Class.  For example, “cotton fabric” is in International Class 24, but “cotton fibers” are in International Class 22.  Accordingly, applicant should further specify the nature of the goods being referenced, and a suggested amendment is offered below.

 

Please note, in addition to the need for this further specification so as to allow for appropriate identification and classification, the USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.

 

Applicant may adopt the following identification, if accurate: 

 

Class 24:  Printed fabrics, namely, fabrics used in the manufacture of clothing; printed fabrics, namely, fabrics used in the manufacture of crafts being quilting materials, pouches, and throw pillows; printed fabrics, namely, fabrics used in the manufacture of gift items in the nature of quilting, curtains, pillow covers, and upholstery; printed fabrics, namely, printed cotton fabric and printed cotton poplin fabric; cotton sheeting being bed sheets; flannel; knitted fabrics; jersey material; cotton fabric, namely, cotton yarn fabric and cotton flannel fabric; cotton base mixed fabrics, namely, cotton rayon fabric, polycotton yarn fabric, and polycotton flannel fabric; over-the-counter fabrics, namely, cotton fabric; silk fabric for use in making wearing apparel; textile fabrics for use in making home furnishings; curtains made of textile fabrics; fabrics for textile use, namely, cotton fabric, dobby fabric, chambray fabric, homespun fabric, textured fabrics, and ikat fabric; gauze fabric for making crafts; fabrics for textile use, namely, cotton fabric, dobby fabric, linen fabric, chambray fabric, homespun fabric, textured fabrics, and ikat fabric; textile fabrics for use in making clothing, crafts and gift items in the nature of warp and weft fabric; fabric piece goods in the nature of table runners; unfitted, textile fabrics for home and commercial interiors; hand towels of cotton, silk, rayon, and mixtures thereof; cotton fabric; dyed cotton yarn fabric; flannel  

 

 

 

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).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods based on use in commerce in more than one international class.  Therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that could potentially be classified in at least 2 classes.  However, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for Class 24, but applicant needs a specimen for any additional class(es).  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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 refusal(s) and/or requirement(s) 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.  

 

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

 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@uspto.gov

 

 

ADDITIONAL 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 November 12, 2019 for

U.S. Trademark Application Serial No. 88290417

 

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. 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@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 November 12, 2019, 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.”