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: 4/29/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS]

 

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).

 

SUMMARY OF ISSUES:

• Identification of Goods
• Disclaimer Required
• Dual Basis Advisory

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable because portions are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.06

 

In Class 029, applicant must specify the type of “sausage” provided, as well as state that the “fish” provided is “not live” and exclude “ice cream, ice milk and frozen yogurt” from applicant’s “milk products.” Applicant must also specify the types of “prepared salads,” “delicatessen salads,” and “ready-to-serve meals” meals claimed.

 

In Class 030, applicant must specify the type of “cereal preparations” provided, as well as specify the types of “delicatessen salads” and “ready-to-serve meals” meals claimed.

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods.  In this case, however, because the nature of the goods, “fresh salads” in Class 031 is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e). Specifically, applicant has already claimed various salad products in Classes 029 and 030, and the examining attorney has been unable to identify any “salad” products properly classified in Class 031.

 

SUGGESTED AMENDMENT

 

Applicant may substitute the following wording, if accurate:

 

Class 029 -      Meat, {specify type, e.g., uncooked, smoked blood, air-dried, vegetarian} sausage, fish, not live, poultry and game; eggs; milk products excluding ice cream, ice milk and frozen yogurt; preserved, deep frozen, dried, cooked and processed fruits and vegetables; fresh fruits and vegetables cut into pieces and in the form of prepared salads, namely, {specify type, e.g., garden salads, fruit salads, vegetable salads}; delicatessen salads, primarily consisting of meat, sausage, poultry, game, fish, egg, vegetable and/or fruit base  the aforementioned goods, also with addition of potatoes and/or pasta and/or rice and/or cereal preparations, namely, {specify type, e.g., tuna salad, taco salad, potato salad, garden salads, chicken salad}; ready-to-serve meals, namely, {specify types, e.g., Prepared meals consisting primarily of meat substitutes, Combination meal consisting primarily of a meat or vegetable-based entree and a soup or salad for consumption on or off the premises, Prepared meals consisting principally of game, Ready-to-eat meals comprised primarily of meats, cheese and also including {indicate specific foods, e.g., rice, pasta, vegetables}, {Indicate whether frozen, prepared or packaged} meals consisting primarily of meat, fish, poultry or vegetables} included in class 29

 

Class 030 -      Pasta; rice; cereal preparations, namely, {indicate specific items, e.g., cereal-based snack foods, cereal bars, cereal-based energy bars, ready-to-eat cereals, biscuits, takes, and cakes made with cereals}; sauces (condiments); spices; delicatessen salads essentially consisting of pasta, rice, and cereal the aforementioned goods, also with addition of processed fruits and/or vegetables, namely, {specify type, e.g., pasta salad, rice salad, macaroni salad}; ready-to-serve meals, namely, {specify types, e.g., {Indicate frozen, prepared or packaged} meals consisting primarily of pasta or rice, Noodle-based prepared meals, Combination meals consisting primarily of pasta or rice-based entrees and soup or salad for consumption on or off the premises, {Indicate frozen, prepared or packaged} meals consisting primarily of quinoa, Packaged meal kits and mixes consisting primarily of pasta or rice} included in class 30

 

Class 031 -      Fresh fruits and vegetables, fresh salads

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “SELECT” because it is not inherently distinctive.  The unregistrable term is at best merely laudatory and descriptive of the alleged merit of applicant’s goods.  See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012); TMEP §1209.03(k).

 

“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)).  Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).

 

The attached evidence from the American Heritage Dictionary, the Merriam-Webster Dictionary, and the Macmillan Dictionary shows this wording SELECT means “Of special quality or value; choice.”  Therefore, this wording is merely laudatory of the supposed superior quality of the goods.

·       http://www.ahdictionary.com/word/search.html?q=select

·       http://www.merriam-webster.com/dictionary/select

·       http://www.macmillandictionary.com/dictionary/american/select_2

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “SELECT” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

DUAL BASIS ADVISORY

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods based on Section 1(b).

 

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 requirement 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. 

 

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.  

 

If the applicant has any questions or requires assistance in responding to this Office Action, please telephone or email the assigned examining attorney.

 

Stedman, Cori

 

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 4/29/2019 FOR U.S. APPLICATION SERIAL NO. 88348180

 

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 4/29/2019 (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.