Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 07, 2020

 

This Office action is in response to applicant’s communication filed on March 12, 2020.

 

In the previous Suspension Notice issued on December 17, 2019, the examining attorney suspended the application pending submission of the foreign registration from applicant’s country of origin.  In addition, the requirement for an acceptable identification of goods was maintained and continued.

 

With its response, the applicant submitted a copy of the foreign registration from applicant’s country of origin and amended the identification of goods.  Applicant’s response has been received and made of record.

 

Based on applicant’s response, the requirement for a true copy of the foreign registration from applicant’s country of origin has been SATISFIED.  See TMEP §§713.02, 714.04.

 

The requirement for an acceptable identification of goods, however, remains unfulfilled.  As such, this requirement is maintained and now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Final: Identification of Goods

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

By its response, applicant proposes to amend the identification of goods to read “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) for Korean traditional food, 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, plates, bowls, dishes, tea services, coffee services; 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, namely, wine glasses, cocktail glasses, shot glasses, drinking glasses, preserve glasses, glass mugs, glass bowls, glass jars, glass dishes, 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, grills, cooking pots; Non-electric dusting apparatus, namely, dusting brushes, dusting gloves, dusting or cleaning cloths; Non-electronic apparatus for preventing vermin in the nature of mouse traps, rat traps; Table mats, not of paper or textile; Combs; Sponges for household purposes; Wash basins, not parts of sanitary installations, namely, wash basin in the nature of bowls; Washing brushes; Cleaning tools and washing utensils other than electric, namely, cleaning brushes for barbecue grills, grill scrapers, pot cleaning brushes, pads for cleaning, microfiber cloths for cleaning; 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, hair brushes; Towel rails and rings; Loofahs for household purposes; Tableware, other than knives, forks and spoons, namely, coffee services in the nature of tableware, tea 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, basins, bowls, plates, mugs, figurines of porcelain; 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 china, crystal, earthenware, glass, porcelain, other than jewelry; Kitchen graters; Kitchen utensils, namely, dishes, splatter screens, serving scoops, kitchen tongs, serving spoons, serving forks, chopsticks; 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 cleaning brushes; Flower vases; Flower pots; Cosmetic utensils, namely, cosmetic spatulas, cosmetic brushes, droppers sold empty for cosmetic purposes, manual cosmetic cleaners, namely, non-woven fabric wipes and sponges, electrical applicators for applying cosmetics to the skin, battery-powered applicators for applying cosmetics to eyelashes; Make-up removing appliances; Toilet paper holders; Non-electric portable coldboxes” in International Class 21.

 

Particular wording in the U.S. application’s identification of goods is not acceptable because it exceeds the scope of the goods in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, 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, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods as follows: 

 

·         Water tanks for live fish in the nature of fish tanks

·         Utensils used in ancestral rites in the nature of decorative crosses of china, crystal, earthenware, glass, porcelain, other than jewelry

 

However, the foreign registration identifies the following goods: 

 

• Glass bowls for live goldfish
• Dishes or bowls used in memorial services for the deceased

 

These goods in the U.S. application exceed the scope of the goods in the foreign registration because the goldfish bowls and dishes and bowls identified in the foreign registration do not reasonably encompass fish tanks and decorative crosses of china, crystal, earthenware, glass, or porcelain. 

 

Therefore, applicant may respond by satisfying one of the following:

 

(1)        Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)        Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

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, 806.03(h), 1402.01(b). 

 

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

 

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.

 

This refusal is maintained and now made FINAL.

 

Proper Response to Final Action

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  Water tanks for live fish in the nature of fish tanks and Utensils used in ancestral rites in the nature of decorative crosses of china, crystal, earthenware, glass, porcelain, other than jewelry.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only: 

 

            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) for Korean traditional food, 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, plates, bowls, dishes, tea services, coffee services; 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, namely, wine glasses, cocktail glasses, shot glasses, drinking glasses, preserve glasses, glass mugs, glass bowls, glass jars, glass dishes, 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, grills, cooking pots; Non-electric dusting apparatus, namely, dusting brushes, dusting gloves, dusting or cleaning cloths; Non-electronic apparatus for preventing vermin in the nature of mouse traps, rat traps; Table mats, not of paper or textile; Combs; Sponges for household purposes; Wash basins, not parts of sanitary installations, namely, wash basin in the nature of bowls; Washing brushes; Cleaning tools and washing utensils other than electric, namely, cleaning brushes for barbecue grills, grill scrapers, pot cleaning brushes, pads for cleaning, microfiber cloths for cleaning; 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, hair brushes; Towel rails and rings; Loofahs for household purposes; Tableware, other than knives, forks and spoons, namely, coffee services in the nature of tableware, tea 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; 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, basins, bowls, plates, mugs, figurines of porcelain; 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; Kitchen graters; Kitchen utensils, namely, dishes, splatter screens, serving scoops, kitchen tongs, serving spoons, serving forks, chopsticks; 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 cleaning brushes; Flower vases; Flower pots; Cosmetic utensils, namely, cosmetic spatulas, cosmetic brushes, droppers sold empty for cosmetic purposes, manual cosmetic cleaners, namely, non-woven fabric wipes and sponges, electrical applicators for applying cosmetics to the skin, battery-powered applicators for applying cosmetics to eyelashes; Make-up removing appliances; Toilet paper holders; Non-electric portable coldboxes

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 April 07, 2020 for

U.S. Trademark Application Serial No. 88312535

 

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. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 April 07, 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.”