Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 08, 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.

 

DATABASE SEARCH DEFERRED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marks is deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

SUMMARY OF ISSUES:

 

1. Identification and Classification of Services—Amendment Required
2. Advisory: Duplicative Entries in IDs
3. Multi-Class Application Requirements

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES—AMENDMENT REQUIRED

 

(a)  Identification

 

The following wording is indefinite and must be clarified because the wording does not make clear what the nature of the goods and/or services are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant’s  Original Language	Issue	Suggested ID
INTERNATIONAL CLASS 35
Business services;	Indefinite: does not make clear the nature of the services provided.	Business services, namely, consumer research and consulting;
Retail and online retail store services;	Indefinite: does not make clear the nature of the services provided.	Retail and on-line department store services featuring a variety of consumer goods of others;
Apparel;	Indefinite: does not make sufficiently clear the nature of the services.	Retail apparel stores;
Clothing	Indefinite: does not specify the clothing items sold	Clothing, namely, shirts, pants, jackets;
And accessories therefore	Indefinite: does not specify the accessories	And accessories, namely, jewelry;
fashion accessories;	Indefinite: does not specify the accessories	fashion accessories, namely, jewelry;
Bags;	Indefinite: does not specify the type of bags offered.	Bags, namely, shoulder bags;
Banners;	Indefinite: the material nature of the banner is not specified	Banners being made of paper;
Signs;	Indefinite: the type of sign is not specified	Advertising signs of paper;
Lotions;	Indefinite: does not specify the nature of the goods	Body lotion;
Books;	Indefinite: does not specify the subject matter	Baby books;
household decorative pieces;	Indefinite: does not specify the nature of the goods offered	Household decorative pieces, namely, decorative plates;
Magnets;	Indefinite: does not specify the nature of the goods	Refrigerator magnets;
Toys;	Indefinite: does not specify the nature of the goods	Infant toys

 

As such, applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  Additionally, an identification of goods must be specific, definite, and accurate. TMEP §1402.01.  Therefore, the applicant must amend the Identification of goods to indicate, in an explicit manner, the nature of the goods in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See TMEP §§1402.01, 1402.01(e).

 

(b)  Classification

 

The applicant has classified the following goods and/or services in International Class 35; however, the proper classifications are detailed below:

 

Applicant’s  Original Language	Correct Class
Cosmetics; Lotions;	Class 3
Candles;	Class 4
Magnets; Sunglasses;	Class 9
Jewelry; fashion accessories	Class 14
stickers; bumper stickers; stationery; posters; pens; pencils; Banners; Signs; Posters; Books; Bookmarks; Calendars; Pins;	Class 16
Bags	Class 18
Picture Frames;	Class 20
Drinkware; Household decorative pieces;	Class 21
Clothing; Headwear footwear; socks	Class 25
Buttons;	Class 26
And accessories thereof; Toys;	Class 28
entertainment services in the nature of visual and audio performances, namely, ongoing video media programs regarding variety, drama, comedy, children's entertainment, and topics of general interest broadcast via an online communications network;	Class 41
entertainment services in the nature of visual and audio performances, namely, ongoing video media programs regarding variety, drama, comedy, children's entertainment, and topics of general interest broadcast via video media;	Class 41

 

Therefore, applicant may respond by (1) adding International Class 3, 4, 9, 14, 16, 18, 20, 21, 25, 26, 28, and 41 to the application and reclassifying these goods and/or services in the proper international class, or (2) deleting the entries not properly classified in International Class 35 from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or in the proper International Class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action below.

 

Following is an example of acceptable Identifications of Goods and/or Services which the applicant may adopt, if accurate:

 

Class 3:          Cosmetics; Body lotions

 

Class 4:          Candles

 

Class 9:          Refrigerator magnets; Sunglasses

 

Class 14:        Jewelry; Fashion Accessories, namely, jewelry

 

Class 16:        stickers; bumper stickers; stationery; posters; pens; pencils; Banners being made of paper; Advertising signs of paper; Posters; Baby books; Bookmarks; Calendars; Pins

 

Class 18:        Bags, namely, shoulder bags

 

Class 20:        Picture Frames

 

Class 21:        Drinkware; Household decorative pieces, namely, decorative plates

 

Class 25:        Clothing, namely, shirts, pants, jackets; Headwear footwear; socks

 

Class 26:        Buttons

 

Class 28:        And accessories thereof, namely, jewelry; Infant toys

 

Class 35:         Business services, namely, consumer research and consulting; Retail and online department store services featuring a variety of consumer goods of others; Retail apparel stores

 

Class 41:        Entertainment services in the nature of visual and audio performances, namely, ongoing video media programs regarding variety, drama, comedy, children's entertainment, and topics of general interest broadcast via an online communications network; Entertainment services in the nature of visual and audio performances, namely, ongoing video media programs regarding variety, drama, comedy, children's entertainment, and topics of general interest broadcast via video media

 

Additionally, the wording “and the like” in the identification of goods and/or services is indefinite and must be deleted.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable because it fails to identify specific goods and/or services.  See TMEP §1402.03(a). 

 

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods and/or services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

ADVISORY: DUPLICATIVE ENTRIES IN IDS

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “Cosmetics; Jewelry.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

Scope Advisory

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

ID Manual Online

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 13 classes; however, applicant submitted a fee sufficient for only one 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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each requirement in this Office action.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

ASSISTANCE

 

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 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.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

Barahona, Byron

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@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 August 08, 2019 for

U.S. Trademark Application Serial No. 88371400

 

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. 

 

 

Barahona, Byron

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@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 August 08, 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.”