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:  January 10, 2020

 

The examining attorney has carefully reviewed the applicant’s response to the first Office action containing amendments and arguments in favor of registration.  The examining attorney has determined the following.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Requirement of Amended Identification Maintained

 

The amended identification of goods is indefinite and must be clarified because it is unclear from the current wording exactly what goods are used in conjunction with the mark.  See TMEP §1402.01.  The requirement of a clarified identification of goods is maintained and made FINAL. 

 

The wording “paper food wrap, cardboard carriers for food and beverages, paper take-out cartons for food, and absorbent pads of paper and cellulose for use in food packaging” in the identification of goods is indefinite and must be clarified because these goods do not appear to be packaging materials.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  In addition, the amended identification contains the unacceptable wording “packaging materials” alone again.  

 

Based on the submitted amendment the applicant may adopt the following identification, if accurate (the wording in question above and “packaging materials alone” has been deleted):  

 

Paper bags; decals; stickers; signage, namely printed paper signs, printed cardboard signs and display cards primarily composed of cardboard; signage, namely, table tents; packaging materials, namely, packaging materials made of recycled paper, cardboard packaging, paper bags for packaging, paper for wrapping and packaging, packaging containers comprised of paperboard for food and beverage, packaging materials, namely, boxes, containers, and cartons of paperboard or cardboard for commercial or industrial packaging; packaging materials, namely, plastic bags and films for wrapping and packaging, adhesive plastic film for wrapping and packaging, plastic packaging wrap for commercial or industrial use, plastic films used for packaging food, food wrapping plastic film, plastic film for use as wrapping and packaging material for food and beverages, food wrapping plastic film, and plastic film roll stock for packaging food; packaging materials, namely, food wrappers; packaging materials, namely, packaging and containers comprised of starch-based materials in the nature of a paper substitute for food, beverages and consumer products, and compostable and biodegradable paper pulp-based to-go containers for food in Class 9.  TMEP Section 1402.01.

 

Although identifications of goods may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification - Much Ado About Something?, 76 Trademark Rep. 224 (1986). 

 

If the applicant fails to respond to this issue, the application may proceed by examiner’s amendment only with the wording in the suggestion above.

 

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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee.

 

If applicant has questions regarding this Office action, please call or email the assigned trademark examining attorney.  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 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. 

 

 

/Jason F. Turner/

Jason F. Turner

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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 January 10, 2020 for

U.S. Trademark Application Serial No. 88368389

 

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. 

 

 

/Jason F. Turner/

Jason F. Turner

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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 January 10, 2020, 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.”