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: 5/10/2019

 

 

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.

 

Search Results

 

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, the applicant must address the following requirements detailed below:

 

• Identification and classification; and
• Evidence of a “full line.”

 

Requirement – Identification and Classificaiton

All identifications must be precise and identify the goods with particularity using common or commercial names for the goods.  TMEP §1402.01. 

            Current Identification

 

Applicant’s current identification reads:

 

International Class 008:  house mark for a full line of non-electric cutting instruments for household use.

 

International Class 021:  house mark for a full line of hand-operated utensils for household use.

 

The identification is unacceptable as presently worded because certain goods are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Specifically, in both classes, the wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, the wording for International Class 008 could include paper trimmers in International Class 016, and the wording for International Class 021 could include ice tea spoons in International Class 008 or writing utensils in International Class 016.  Note that applicant may add classes for goods that are encompassed by the broad wording used in the present identification, following the instructions, below. 

 

The USPTO accepts identifications that refer to a “house mark for” or “a full line of” a genre of goods only if those goods can be classified in a single international class.  TMEP §1402.03(c). 

 

 

            Suggested Amendment

 

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):  

 

International Class 008:  Non-electric cutting instruments for household use, namely, _______ {list the items by common or commercial name, e.g., kitchen knives, scissors}.

 

International Class 016:  Paper trimmers; writing utensils.

 

International Class 021:  Hand-operated utensils for household use, namely, ______ {list items by common or commercial name, e.g., colanders, ice cream scoops}.

 

            Limitation on Amendments

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

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.

 

            Adding Classes

 

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 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).  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 International Classes 008 and 021.  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.

 

 

 

Requirement – Evidence of a “Full Line”

 

The application indicates applicant is using its mark on a “house mark” for a “full line” of non-electric cutting instruments for household use in International Class 008 and as a “house mark” for a “full line” of hand-operated utensils for household use in International Class 021; however, the required evidence of use on a full line of or house mark for such goods has not been provided.  Because full line / house marks are used on such a large number and variety of goods, an applicant is required to provide evidence of applicant’s use of the mark on a majority of the goods of this type.  TMEP §1402.03(c); see 37 C.F.R. §2.61(b).  Thus, applicant must provide evidence of such use by submitting product catalogs or similar material and/or advertising and promotional materials and webpages, showing use of the mark for a full line of the identified category of goods.  TMEP §1402.03(c). 

 

If applicant does not provide such evidence, applicant must amend the identification to (1) delete “house mark” and “full line of” and (2) specify the common commercial or generic name for each good.  See TMEP §1402.03(c).  If applicant is providing a full line of a subset of a genre of goods or services, applicant may amend applicant’s identification to indicate that subset (e.g., a full line of sports clothing rather than a full line of clothing).

 

Here, applicant’s listing of a full line of non-electric cutting tools would include items such as tree pruners, cuticle trimmers, scissors, fishing line cutters, pizza cutters, pipe cutters, plastic cutlery knives, hobby knives, mandolin slicers, etc.  Applicant’s specimen shows use of the mark on only kitchen knives and scissors.  Applicant must therefore provide greater evidence of a full line of non-electric household cutting instruments or amend the identification of goods to limit the line to the evidence provided (e.g., “a full-line of kitchen knives” or simply “kitchen knives”).

 

Similarly, applicant’s identification of a full line of hand-operated household utensils in International Class 021 is supported by a specimen showing use of the mark on only 10 items for International Class 021, which are:

 

• Serving tongs;
• Colander;
• Whisk;
• Potato masher;
• Cooking strainer;
• Ice cream scoop;
• Cooking turner;
• Cheese grater;
• Jar opener; and
• Serving bowls (which are arguably not “utensils” in the common usage of the term).

 

All of these goods are kitchen use items and do not include utensils for household use outside of cooking, such as household containers for pet food, loofahs, cleaning brushes, cinder sifters, paper towel dispensers, atomizers, coal buckets, scrapers, caddies, metal cleaning sponges, etc. 

 

The "full line of" language may be used only in appropriate situations and the circumstances and specimens or other evidence of record must be analyzed carefully to ensure that an applicant who does not in fact use a particular mark on a sufficient number or variety of goods or services in its line does not receive a trademark registration that could potentially bar the registration of another applicant who uses a similar mark on different goods or services.

 

…

 

The USPTO will register a mark for a "full line of" a genre of goods or services only when evidence shows the mark is actually used as such.  If an applicant seeks to register a mark for a "full line of" a genre of goods or services in an application under any basis, including §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line.  This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a mark for a "full line of" a genre of goods or services.  37 C.F.R. §2.61(b).

 

TMEP §1402.03(c).  Therefore, applicant must provide evidence to substantiate the claim of “virtually all” of the type of goods listed.  Id.  Failure to establish sufficient broad use may result in refusal of registration.  See In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1999) (use of the mark on only three products was insufficient to show use for a “full line” of products); TMEP §1402.03(c). 

 

 

Advisory – Ownership Claim

 

Applicant’s claim of ownership of U.S. Registration Nos. 3359127 and 1772104 will not be printed on any registration that may issue from this application because the goods and/or services listed in the registrations are significantly different than those listed in the present application.  Specifically, U.S. Registration No. 3359127 is for retail store services featuring alcoholic beverages and U.S. Registration No. 1772104 is for pharmacy services.  Only prior registrations of the same or similar marks with substantially related goods and/or services are considered related registrations for purposes of an ownership claim.  See 37 C.F.R. §2.36; TMEP §812.

 

Applicant’s claim of ownership of U.S. Registration No. 1392525 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled.  Only claims of ownership of active registrations are printed.  See 37 C.F.R. §2.36; TMEP §812.

 

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below.  Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

 

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.  

 

 

 

/Andrea Hack/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

571-272-5413 (ph.)

andrea.hack@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 5/10/2019 FOR U.S. APPLICATION SERIAL NO. 88318004

 

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 5/10/2019 (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.