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: 5/13/2019

 

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

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Indefinite identification of goods – Specified goods only
• Foreign registration certificate required – When available

 

NO CONFLICTING MARKS FOUND

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).

 

However, applicant must respond to the following requirement(s) before registration can be granted.

 

IDENTIFICATION OF GOODS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Applicant’s goods are identified as “Rubber household gloves; Containers for household or kitchen use; Loofahs for household purposes; Laundry hampers for household use; Apparatus for processing food and drinks for household purposes other than electric; Plastic containers for household use; Hemp for cleaning; Shoe horns; Containers for Korean traditional food, kimchi; pot lids; Ironing boards; all-purpose portable household containers; Heat-insulated containers; Buttonhooks; Chopping boards for kitchen use; Holders for cutting boards; Lunch boxes; Ceramic tableware; Mangers for animals; Turners for kitchen use; Buckets; Large bowls; Bottles, except vases; Insulated flasks; thermal insulated containers for food; Glass based products, not for building; Cups, not of precious metal; Tumblers, not of precious metal; Soap holders and soap boxes; Non-electric pots; Non-electric cooking utensils; Non-electric dusting apparatus; Non-electronic apparatus for preventing vermin; Table mats, not of paper or textile; Combs; Sponges; Wash basins, not parts of sanitary installations; Washing brushes; Cleaning tools and washing utensils other than electric; Laundering nets; Laundry drying racks; Washing balls; Brushes; Towel rails and rings; Loofahs; Tableware, other than knives, forks and spoons; Services being dishes; Glass seal containers for preserving food; Waste baskets; Eyeglass cleaning clothes; Pet feeding dishes; Portable cooking kits for outdoor use; Water tanks for live fish; Measuring cups for cooking; Cooking pans; Cooking mesh bags, other than for microwaves; Sanitary gloves for household purposes; Boxes of glass; Glass caps; Potties for children; Electric devices for attracting and killing insects; Drinking vessels; Garbage cans for food waste; Toothpicks; Porcelain ware; Reusable plastic water bottles sold empty; Piggy banks; Electric and non-electric lint removers; Electric and non-electric bottle openers; Electric toothbrushes; Brushes for cleaning feeding bottles; Utensils used in ancestral rites; Kitchen graters; Kitchen utensils; Spatulas for kitchen use; Kitchen mitts; Woks; Side-dish boxes; Julienne cutters; Candelabra being candlesticks; Dental floss; Toothbrushes; Knife blocks; Portable pots and pans for camping; Frying pans; Tongue cleaners; Flower vases; Flower pots; Cosmetic utensils; Make-up removing appliances; Toilet paper holders; Non-electric portable coldboxes” in International Class 21.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Here, the wording in the identification of goods is unacceptable because it is indefinite and too broad.  The wording requires clarification and could include goods that are classified in more than one international class.  See TMEP §§1402.01, 1402.03.  Notations concerning unacceptable wording are specified in bold, underlined text in the suggestion below. 

 

The following substitute wording is suggested, if accurate:

 

            Class 9:    Measuring cups for cooking

 

            Class 21:   Rubber household gloves; Containers for household or kitchen use; Loofahs for household purposes; Laundry hampers for household use; Apparatus for processing food and drinks for household purposes other than electric, namely, hand-operated food and beverage processor; Plastic containers for household use; Shoe horns; Kimchi containers, namely, containers for household use especially Korean traditional fermented vegetables (kimchi); Pot lids; Ironing boards; all-purpose portable household containers; Heat-insulated containers for household use; Buttonhooks; Chopping boards for kitchen use; Holders for cutting boards; Lunch boxes; Ceramic tableware, namely, {indicate specific tableware, e.g., plates, bowls, dishes}; Mangers for animals; Household utensils, namely, turners for kitchen use; Buckets; Large bowls; Bottles sold empty, except vases; Insulated flasks; thermal insulated containers for food; Glass based products in the nature of {indicate specific glass-based products, e.g., colored sheet glass, common sheet glass}, not for building; Cups, not of precious metal; Drinking glasses, namely, tumblers, not of precious metal; Soap holders and soap boxes; Non-electric coffee pots; Non-electric cooking utensils, namely, griddles; Non-electric dusting apparatus, namely, {list specific dusting apparatus, e.g., dusting brushes, dusting gloves, dusting or cleaning cloths}; Non-electronic apparatus for preventing vermin in the nature of {specify, e.g., mouse traps, rat traps}; Table mats, not of paper or textile; Combs; Sponges for household purposes; Wash basins, not parts of sanitary installations, namely, bowls; Washing brushes; Cleaning tools and washing utensils other than electric, namely, {indicate specific tools and utensils, e.g., cleaning brushes for barbecue grills, grill scrapers, pot cleaning brushes}; Laundry drying racks in the nature of clothes drying racks; Washing balls in the nature of dryer balls that are placed in the clothes drying machine with the clothing to assist tin the drying process; Brushes, namely, {list specific brushes, e.g., hair brushes, cosmetic brushes}; Towel rails and rings; Loofahs for household purposes; Tableware, other than knives, forks and spoons, namely, {indicate specific items of tableware, e.g., coffee services in the nature of tableware}; Coffee services being dishes; Glass seal containers for preserving food, namely, food preserving jars of glass; Waste baskets; Eyeglass cleaning cloths; Pet feeding dishes; Portable cooking kits for outdoor use; Water tanks for live fish in the nature of fish tanks; Cooking pans; Sanitary gloves for household purposes in the nature of disposable gloves for home use; Boxes of glass; Glass caps, namely, glass stoppers; Potties for children; Electric devices for attracting and killing insects; Drinking vessels; Garbage cans for food waste; Toothpicks; Porcelain ware, namely, {list specific goods, e.g., basins, bowls, plates, mugs}; Reusable plastic water bottles sold empty; Piggy banks; Electric and non-electric battery-operated lint removers; Electric and non-electric bottle openers; Electric toothbrushes; Brushes for cleaning feeding bottles, namely, bottle cleaning brushes; Utensils used in ancestral rites in the nature of decorative crosses of {indicate china, crystal, earthenware, glass, porcelain}, other than jewelry; Kitchen graters; Kitchen utensils, namely, {list specific goods, e.g., dishes, splatter screens, serving scoops, kitchen tongs}; Spatulas for kitchen use; Kitchen mitts; Woks; Side-dish boxes in the nature of plastic storage containers for side dishes; Julienne cutters; Non-electric candelabra being candlesticks; Dental floss; Toothbrushes; Knife blocks; Portable pots and pans for camping; Frying pans; Tongue cleaners in the nature of tongue brushes; Flower vases; Flower pots; Cosmetic utensils, namely, {indicate specific utensils, e.g., cosmetic spatulas, cosmetic brushes}; Make-up removing appliances; Toilet paper holders; Non-electric portable coldboxes

 

            Class 22:  Laundering nets in the nature of mesh bags for washing laundry; Cooking mesh bags, other than for microwaves in the nature of netted pocket bags for cooking, namely, cheesecloth bags for use in cooking

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

ID Manual Online

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED – WHEN AVAILABLE

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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.  

 

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. 

 

 

/Amy L. Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 5/13/2019 FOR U.S. APPLICATION SERIAL NO. 88312535

 

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 5/13/2019 (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.