To: | JACK JACK LLC (uspto@trademarks411.com) |
Subject: | U.S. Trademark Application Serial No. 88379824 - JJ CARE - N/A |
Sent: | July 22, 2019 03:39:59 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88379824
Mark: JJ CARE
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Correspondence Address:
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Applicant: JACK JACK LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 22, 2019
This Office action is in response to applicant’s communication filed on July 3, 2019. Applicant’s communication is referenced hereinafter as “Response”.
The previous Office Action of June 26, 2019, and all supporting evidence attached thereto, is incorporated by reference herein.
After review of the Response, the following is determined:
New Requirement: REQUIREMENTS FOR MULTIPLE-CLASS APPLICATIONS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 005; and applicant needs a specimen for class 010. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
Maintained and Continued Requirement
In addition to the above stated requirement, the following requirement is MAINTAINED and CONTINUED for the reasons set forth in the previous Office Action of June 26, 2019, and as restated below, in accordance with 37 C.F.R. §2.64(a):
Requirement for clarification of the identification of goods - the original identification of goods is as follows: “Dental and health industrial products; dental and health patient bibs,” in International Class 010. In the Office Action issued June 26, 2019, applicant was advised that the wording “dental and health industrial products” was unclear and required further specification. Applicant was also advised that the scope of the identified goods could not be broadened beyond the limits of the original identification.
The proposed amended identification of goods is “Dental and medical products, namely, disposable dental bibs, oral swabs,” in International Class 010; however the goods “oral swabs” is indefinite and may identify goods in more than one international class. Specifically, “cotton swabs for medical use” are goods in Class 005; “medical apparatus in the nature of handheld devices containing a foam swab for obtaining buccal cells” are goods in Class 010; and “swabs for cleaning medical instruments” are goods in Class 021.
Therefore, applicant may do one of the following to address this requirement:
(1) Only pursue goods in Class 010: delete the goods “oral swabs” from the identification and amend the identification of goods to “Dental and medical products, namely, disposable dental bibs,” in International Class 010 and provide a substitute specimen showing use of the mark for the Class 010 goods; alternatively, if the “oral swabs” are part of a medical device or apparatus, applicant will need to amend the identification of goods in this Class to clarify the nature of these goods and still provide an acceptable Class 010 specimen.
(2) Only pursue goods in Class 005: Amend the identification and classification of goods to add International Class 005 and clarify the “oral swabs” goods as “cotton swabs for dental and medical use” in International Class 005 (if these goods are not of cotton material, the correct material should be indicated); applicant will still need to provide an acceptable substitute specimen for the Class 010 goods;
(3) Pursue goods in Class 010 and Class 005, or other international classes: delete the goods “oral swabs” from the identification and amend the identification of goods to “Dental and medical products, namely, disposable dental bibs,” in International Class 010 and provide a substitute specimen showing use of the mark for the Class 010 goods; for the “oral swabs” goods, applicant will need to add the correct class to the application, amend the identification to properly specify the “oral swabs” in the new class, and provide an acceptable specimen of use for that class.
Response to office action
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. 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.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
If applicant experiences difficulties navigating the electronic response form, applicant should direct all technical inquiries to the USPTO TEAS Support Group by sending an email to TEAS@uspto.gov. Please include the application serial number and preferred daytime contact information in the email.
U.S. Counsel Rules Changes Advisory
In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions. All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.
These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register. See the U.S. Counsel Rule change webpage for more information.
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 response to this nonfinal Office action
/Kaelie E. Kung/
Examining Attorney
Law Office 103
571-272-8265
kaelie.kung@uspto.gov
RESPONSE GUIDANCE