To: | Publix Asset Management Company (trademarks@tlolawfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88318095 - PUBLIX - 15.1 |
Sent: | 5/10/2019 11:17:58 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88318095
MARK: PUBLIX
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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: Publix Asset Management Company
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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: 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:
Requirement – Identification and Classification
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 (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):
International Class 003: house mark for a full line of home and personal cleaning products.
International Class 005: house mark for a full line of over-the-counter drugs and pharmaceutical preparations for use by human beings.
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 International Class 003, 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 could include cleaning brushes in International Class 021.
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). Note that applicant may add classes to include goods covered by the present identification, following the instructions, below.
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 003: House mark for a full line of home and personal cleaning preparations; house mark for a full line of bathroom cleaning preparations; house mark for a full line of kitchen cleaning preparations; house mark for a full line of laundry preparations; personal cleaning preparations, namely, ______ {list particular items, e.g., cosmetic soaps, facial scrubs, shampoo}; home cleaning preparations, namely, ______ {list particular items, e.g., laundry soap, dishwasher soap, dish soap}.
International Class 005: house mark for a full line of over-the-counter drugs and pharmaceutical preparations for use by human beings.
International Class 021: Cleaning brushes for household use; toothbrushes.
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
(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 003 and 005. 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”
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 home and personal cleaning products would include items such as window cleaning spray, shampoo, toothpaste, denture cleaning preparations, etc., that are not shown in the specimens. Applicant’s specimen shows use of the mark on a variety of International Class 003 cleaning items, but has not provided evidence of use on “virtually all” goods as required. 37 C.F.R. §2.61(b); TMEP §1402.03(c). Applicant must therefore provide greater evidence of a full line of personal and home cleaning preparations or amend the identification of goods to limit the line to the evidence provided.
Similarly, applicant’s identification of a full line of over-the-counter drugs and pharmaceutical preparations in International Class 005 must be supported by greater evidence that the drugs and pharmaceuticals treat all conditions.
“[I]n the pharmaceutical context, proof of use in connection with pharmaceuticals to treat diseases or health problems in all categories in the WHO International Statistical Classification of Diseases and Related Health Problems reflects appropriate use to qualify for a "full line."
TMEP §1402.03(c).
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).
As an alternative to providing greater evidence regarding the house mark / full line of goods, applicant may amend the identification to remove this wording. For instance, applicant may adopt the following suggested language below, if appropriate. Note that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within:
International Class 005: Over-the-counter drugs and pharmaceutical preparations for treating ______ {specify the body part or condition, e.g., heart disease, kidneys, skin and scalp conditions, fungal infections, viral infections, bacterial infections, lung and breathing disorders, aches and pains, inflammation, thyroid and lymphatic conditions, blood conditions, eyes and ears, liver, mood disorders, sleeplessness, tiredness, and mouth sores}.
Advisory – Ownership Claim
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.