To: | CERVINO CORPORATION (karima@kgulick.com) |
Subject: | U.S. Trademark Application Serial No. 88340466 - HACHI - CER018-002TM |
Sent: | August 09, 2019 04:31:52 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88340466
Mark: HACHI
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Correspondence Address: |
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Applicant: CERVINO CORPORATION
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Reference/Docket No. CER018-002TM
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 09, 2019
Applicant must address issues shown below. On August 8, 2019, the examining attorney and Karima Gulick discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
How to respond. Click to file a response to this nonfinal Office action.
Introduction
This Office action is in response to applicant’s communication of July 18, 2019.
In a previous Office action dated April 23, 2019, the examining attorney refused registration based on Trademark Act Section 2(d) for a Likelihood of Confusion with two registered marks. A prior pending application was also cited for a potential likelihood of confusion. Applicant was also required to amend the identification of goods and provide information about the wording.
Based on applicant’s response, the information requirement has been satisfied. Additionally, the prior pending cite has been withdrawn. See TMEP §713.02.
However, the identification of goods still needs further specification, and additional fees may be required if applicant’s goods fall in more than one class. While the goods are still indefinite, a likelihood of confusion with the registered marks still remain.
Additionally, as a result of a new rule that took effect on August 3, 2019, applicant must now satisfy additional NEW requirements, as discussed below. See TMEP §§706, 711.02; see also Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 Fed. Reg. 31498 (July 2, 2019).
Summary of Issues:
· NEW ISSUE: Attorney Bar Information Required
· NEW ISSUE: Attorney Attestation Required
· MAINTAINED & CONTINUED: Identification of Goods Requires Amendment
· ADVISORY: Multiple Class Application Requirements
· MAINTAINED & CONTINUED: Section 2(d) Likelihood of Confusion
NEW ISSUE: Attorney Bar Information Required
NEW ISSUE: Attorney Attestation Required
MAINTAINED & CONTINUED: Identification of Goods Requires Amendment
Applicant seeks to amend its goods to:
“Veterinary apparatus and instruments, namely, chemistry analyzers, hematology analyzers, sample preparation devices, pathogen and protein detection kits, and immunochromatography test materials.”
For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first. See id. Generally, a kit is classified in the same international class as the majority of the components in the kit. See id. For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).
If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit. See id. For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].” See id. Generally, this type of kit is classified in the international class of the product being made. For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
The following amendments are suggested based on the examining attorney’s discussion with applicant’s attorney (added language in bold; deleted language
struck; requests for further information in bold and italicized):
Class 5: Veterinary apparatus in the nature of diagnostic pathogen and protein detection kits comprised of diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, {indicate disease or condition, e.g., heartworm}
Class 10: Veterinary apparatus and instruments, namely, chemistry
analyzers for veterinary diagnostic purposes, hematology analyzers for veterinary diagnostic purposes, sample preparation devices for
veterinary diagnostic purposes, pathogen and protein detection kits, and immunochromatography test materials in the nature of immunochemical testing apparatuses for
veterinary use.
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.
ADVISORY: Multiple Class Application Requirements
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional 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). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
MAINTAINED & CONTINUED: Section 2(d) Likelihood of Confusion
The registration refusal set forth in the initial Office action dated April 23, 2019 is hereby maintained and continued.
Response Guidelines
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.
Dinisha Fernando Nitkin
/dfn/
Examining Attorney
Law Office 110
(571) 272-0212
dinisha.nitkin@uspto.gov
RESPONSE GUIDANCE