To: | Bateel Factory for Sweets & Chocolate (ptodocket@arelaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88350204 - JOMARA - 80213/10 |
Sent: | 6/4/2019 11:03:38 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88350204
MARK: JOMARA
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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: Bateel Factory for Sweets & Chocolate
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: 6/4/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On June 4, 2019, the trademark examining attorney and Max Vern 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, 711.
SUMMARY OF ISSUES:
In this case, the U.S. application identifies the particular goods as follows: “Cereal-based snack food, candy, almond confectionary; cocoa-based beverages; biscuits, caramel, chewing gum, chocolate, chutneys, cinnamon; cocoa products, namely, cocoa mixes, cocoa spreads; coffee, unroasted coffee; condiments, namely, pesto, mustard, chili pepper sauces; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; dressing for salad, fondants, ginger, gingerbread, halvah, honey, liquorice, non-medicated lozenges, macaroons, malt biscuits, marzipan, muesli, oat flakes, oatmeal, pastries, pastry, peanut confectionary, pepper, peppermint sweets, petit beurre biscuits, petits fours, pralines, sauces, spices, sugar, sugar confectionary, tea.”
However, the foreign registration identifies the following goods: “confectionery and ices, chocolates, and chocolate products.”
These goods in the U.S. application exceed the scope of the goods in the foreign registration because the following goods are not types of the goods identified in the foreign registration: Cereal-based snack food; biscuits; chewing gum; chutneys; cinnamon; cocoa products, namely, cocoa mixes, cocoa spreads; coffee; unroasted coffee; condiments, namely, pesto, mustard, chili pepper sauces; cookies; dressing for salad; ginger; honey; malt biscuits; muesli; oat flakes; oatmeal; pastries; pastry; pepper; petit beurre biscuits; sauces; spices; sugar; tea.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may substitute the following wording, if accurate (bolded text indicating suggested changes):
In Class 29, (Based on 44(e)) Preserved, dried and cooked fruits and vegetables, namely, dates
In Class 30, (Based on 44(e)) candy; almond confectionary, namely, confectionery made of sugar also containing nuts; cocoa-based beverages; caramels; chocolate; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; cookies; fondants; gingerbread; halvah; liquorice; non-medicated lozenges; macaroons; marzipan; peanut confectionary, namely, confectionery made of sugar also containing nuts; peppermint sweets; petits fours; pralines; sugar confectionary, namely, confectionery made of sugar; (Based on Intent to Use) cereal-based snack food; biscuits; chewing gum; chutneys; cinnamon; cocoa products, namely, cocoa mixes, cocoa spreads; coffee; unroasted coffee; condiments, namely, pesto, mustard, chili pepper sauces; dressing for salad; honey; muesli; oat flakes; oatmeal; pastries; pastry; petit beurre biscuits; ginger; malt biscuits; pepper; sauces; spices; sugar; tea
If applicant adopts the above-suggested identification, applicant must satisfy the requirements to amend the application to one based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b). To amend an application to one based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), an applicant must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” See 37 C.F.R. §2.34(a)(2).
For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
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.
Applicant must also respond to the following requirement(s).
MULTIPLE-CLASS APPLICATION REQUIREMENTS: The application identifies goods that may be classified in more than two classes; however, applicant submitted fees sufficient for only two classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
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 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 fees already paid (view the USPTO’s current fee schedule).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant must also respond to the following requirement.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED: To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the word “JOMARA” or its equivalent in non-Latin characters has any meaning or significance in the industry in which the goods are manufactured/provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.
(4) Respond to the following questions:
· Explain whether the word “JOMARA” or its equivalent in non-Latin characters is a type of date;
· Explain whether the word “JOMARA” or its equivalent in non-Latin characters is a type of food product;
· Explain whether the word “JOMARA” or its equivalent in non-Latin characters has meaning other than trademark significance.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
CONCLUSION: 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(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.
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. 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.
Toy, Joshua
/Joshua S. Toy/
Trademark Examining Attorney
Law Office 120
(571) 272-4856
joshua.toy@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.