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:  November 07, 2019

 

 

FINAL 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.  This requirement is now made FINAL. 

            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 016:  house mark for a full line of paper products for household use.

 

International Class 021:  house mark for a full line of paper products for house household use, namely paper plates, bowls, and cups.

 

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 addition to the issues identified below, 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 paper plates and paper cups 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). 

 

Here, the wording “paper products for household use” could include a variety of paper goods that are not in International Class 016, including the paper plates listed by applicant in International Class 021.  Therefore, the “house mark for a full line” language is not acceptable as it is overly broad.  Id. 

 

 

            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 016:  Paper products for household use, namely, ______ {list items by common or commercial name, e.g., facial tissue, napkins, and paper towels}.

 

International Class 021:  house mark for a full line of paper products for household use, namely paper plates, bowls, and cups.

 

            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 016 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.

 

This requirement is now made FINAL. 

 

 

FINAL Requirement – Evidence of a “Full Line”

 

The application indicates applicant is using its mark on a “house mark” for a “full line” of paper products for household use in International Class 016; 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 paper products for household use would include items such as envelopes, coffee filters, notepads, paper tablecloths, paper signboards, gift cards, etc.  Applicant’s specimen shows use of the mark on items such as paper towels, toilet paper, and paper food preparation goods, but not on paper stationery items for household use.  Applicant must therefore provide greater evidence of a full line of household paper products or amend the identification of goods to limit the line to the evidence provided.

 

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). 

 

This requirement is now made FINAL. 

 

Response Instructions

 

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. 

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond 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).

 

 

 

 

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 November 07, 2019 for

U.S. Trademark Application Serial No. 88318120

 

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. 

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 07, 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.”