To: | Zag America, LLC (michael.wheeler@dinsmore.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88382867 - FAIRY FORCE - 89426-3 |
Sent: | 6/28/2019 5:52:21 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88382867
MARK: FAIRY FORCE
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Zag America, LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE 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: 6/28/2019
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.
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
- Amendment to Identification of Goods and Services Required
- Multiple-Class Application Requirements
- Disclaimer Required for Specific Goods in Class 31
- Signature Omitted on Application
AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and services identifies goods which are classified incorrectly. Applicant must amend the application to classify the goods as per the guidelines below. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Further, the identification of goods and services contains indefinite and overly broad wording that must be clarified and properly classified. TMEP §1402.01.
Applicant must clarify the wording “digital media, namely, DVDs, sound recordings, audiovisual recordings and pre-recorded electronic media featuring music, motion pictures, and television programs featuring children's entertainment content” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the pre-recorded electronic media being provided by the applicant and does not make clear that all of the digital media goods feature children’s entertainment content.
Applicant must clarify the wording “electronic publications, namely, books, magazines, newsletters, cartoons and periodicals featuring children's entertainment content” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear whether the applicant’s electronic publications are downloadable or recorded on computer media, properly classified in International Class 9. Further, the nature of the “cartoon” publications is unclear.
Applicant must clarify the wording “electronic publications, namely, books, magazines, newsletters, cartoons and periodicals featuring children's entertainment content” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear whether the applicant’s electronic publications are downloadable or recorded on computer media, properly classified in International Class 9. Further, the type of “cartoon” publications is unclear.
Applicant must clarify the wording “sticker packs,” “books, namely, novels, a series of fiction chapter books, namely, novels and books,” “paperboard books,” and “table covers made of paper” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the goods being provided by the applicant.
Applicant must clarify the wording “trading cards” because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording could identify goods in more than one international class. Trading cards, other than for games are properly classified in International Class 16; however, trading cards for games are properly classified in International Class 28.
Applicant must clarify the wording “textile napkins” because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording could identify goods in more than one international class. Textile napkins being babies’ napkins are properly classified in International Class 5, while table napkins of textile are properly classified in International Class 24.
Applicant must clarify the wording “clothing, namely, children's t-shirts, t-shirts, hats, sweatshirts, shorts, sweaters, sleepwear, swim trunks for boys, underwear, jackets for boys, Halloween costumes, children's costumes” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the “children’s costumes” being provided by the applicant. For example, children’s costumes could include children’s bathing costumes, children’s dance costumes, or costumes for use in children’s dress up play.
Applicant must clarify the wording “toys, namely, plush toys, poseable toys, building sets, action figure toys, toy vehicles, roleplay toys in the nature of play sets for children to imitate the main characters in a TV series, playsets for dolls and figures, electronic action toys, electronic learning toys, beach toys in the nature of sand toys, beach balls and body boards, pool and water toys, and water guns” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear that the nature of the “posable toys” and “pool toys” being provided by the applicant. For example, posable toys could include posable action figures or posable dolls, while pool toys could include inflatable pool toys or pool noodle toys.
Suggested Amendments
Applicant may adopt the following suggested amendments, if accurate:
Class 5: Textile napkins being babies’ napkins
Class 9: Digital media, namely, DVDs, sound recordings, audiovisual recordings and pre-recorded electronic media in the nature of CDs, DVDs, and video cassettes featuring music, motion pictures, and television programs, all of the forgoing featuring children’s entertainment content; downloadable computer software, namely, mobile application software featuring kids' games for use on mobile devices; downloadable electronic game software for handheld electronic devices; interactive downloadable video game programs and computer game programs; downloadable electronic publications, namely, books, magazines, newsletters, cartoon strips and periodicals featuring children's entertainment
Class 16: Printed material, namely, books, comics, serial publications in the form of magazines, comic books, graphic novels and manga featuring scenes and characters based on a television series; sketchbooks; notebooks; blank journals; sticker albums; sticker packs being stickers; stationery; drawing paper; construction paper; pens; drawing pencils; writing utensils; trading cards, other than for games; posters; books, namely, novels; a series of fiction works, namely, novels and chapter books; educational books featuring leveled readers; story books; picture books; paperboard children’s books; sticker books; coloring books; children's activity books; gift books featuring characters based on a television series; novelty books for children featuring characters from televisions series; talking children's books; personalized books, namely, storybooks featuring characters from television series; scrapbooks; calendars; diaries; markers; crayons; paper party goods, namely, napkins, table covers being tablecloths made of paper; paper banners; party goodie bags of paper or plastic; party favor gift boxes sold empty; paper party decorations
Class 24: Bed sheets; bed blankets; bed linen; bed spreads; blanket throws; quilts; throws; pillow cases; comforters; curtains; dust ruffles; bath linen; towels; washcloths; banners and flags of linen; tapestries made of textiles; table linens; table napkins of textile; textile place mats; table cloths not of paper; fabric for textile use sold by the yard
Class 25: Clothing, namely, children's t-shirts, t-shirts, hats, sweatshirts, shorts, sweaters, sleepwear, swim trunks for boys, underwear, jackets for boys, Halloween costumes, costumes for use in children’s dress up play; sportswear, namely, shirts, pants, jackets and shorts; children's footwear, namely, athletic shoes, sandals, boots; clothing accessories, namely, ties, belts for clothing, hats, scarves, socks
Class 28: Toys, namely, plush toys, poseable toys in the nature of action figures, building sets, action figure toys, toy vehicles, roleplay toys in the nature of play sets for children to imitate the main characters in a TV series, playsets for dolls and figures, electronic action toys, electronic learning toys, beach toys in the nature of sand toys, beach balls and body boards, inflatable pool toys, water toys, and water guns; games, namely, puzzles, board games, card games, action skill games, arcade games; video games, namely, video game consoles, coin-operated video games, hand-held video games with liquid crystal displays; sporting goods, namely, in-line skates, skateboards, non-motorized children's toy scooters, yo-yos, plastic toy hoops, toy flying discs, sports balls; seasonal toys, namely, sleds, water squirting toys, kites, backyard water slides, bubble making wand and solution sets, inflatable bounce house in the nature of an air inflated cushion in an air inflated structure, and inflatable swimming pools; trading cards for games
Class 29:
Dairy-based beverages; vegetable-based food beverages; fruit-based food beverages; yoghurt; yoghurt-based beverages; coconut-based beverages used as a milk substitute; milk beverages containing
fruits; milk based beverages containing fruit juice; soy-based food beverages used as a milk substitute; nut and seed-based milks for use as a milk substitute; fruit-based snack food; candied fruit
snacks; dehydrated fruit snacks; processed fruits and vegetables; applesauce; refrigerated food package combinations consisting primarily of
meat, cheese or processed vegetables; frozen, prepared and packaged entrees and meals consisting
primarily of meat, fish, poultry or vegetables; frozen, prepared and packaged vegetable-based entrees; hamburger; hot dogs; jams; jellies; meat, fish, poultry and game, not live; potato crisps and chips; soups; cheese and cracker combinations; cheese spread
Class 30: Applesauce
Class 31: Raw fruits; fresh fruits; unprocessed fruits; raw vegetables; fresh vegetables; unprocessed vegetables; unprocessed grains for eating
Class 32: Non-alcoholic beverages, namely, soft drinks, fruit drinks, fruit punches, fruit juices, lemonade, sports drinks, smoothies, drinking water, flavored water; juice base concentrates; syrups for making soft drinks; vegetable juices
Class 41: Entertainment services, namely, ongoing television programs in the field of family entertainment, animated cartoons and live action programming, a continuing variety show broadcast over television, satellite, audio and video media, a continuing comedy show broadcast over television, satellite, audio and video media, ongoing series featuring family entertainment content provided through cable television, satellite, the internet and webcasts, provision of continuing programs, segments, movies, full length motion pictures, motion picture shorts and shows featuring family entertainment content delivered in theatres and by television, satellite, and the internet, providing ongoing webisodes featuring family entertainment content via a global computer network, and provision of non-downloadable films and movies via a video-on-demand service
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 services that are classified in at least eleven classes; however, applicant submitted a fee sufficient for only nine classes. 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.
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.
DISCLAIMER REQUIRED
THIS PARTIAL REQUIREMENT APPLIES ONLY TO GOODS SPECIFIED THEREIN
In this case, applicant must disclaim the wording “FAIRY”, for squash and apples in International Class 31, because it is not inherently distinctive. This unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the websites of USDA (http://apps.ams.usda.gov) and the U.S. National Plant Germplasm System (http://npgsweb.ars-grin.gov) show that “FAIRY” is a varietal name for squash and apples. As squash and apples are types of the applied-for goods, namely, raw fruits, fresh fruits, unprocessed fruits, raw vegetables, fresh vegetables, and unprocessed vegetables, the word “FAIRY” is merely descriptive of applicant’s Class 31 goods in the nature of squash and apples.
Further, applicant must disclaim the wording “FORCE”, for corn and ryegrass in International Class 31, because it is not inherently distinctive. This unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the websites of USDA (http://apps.ams.usda.gov) shows that “FORCE” is a varietal name for corn and ryegrass. As corn and ryegrass are types of the applied-for goods, namely, raw fruits, fresh fruits, unprocessed fruits, raw vegetables, fresh vegetables, unprocessed vegetables, and unprocessed grains for eating, the word “FORCE” is merely descriptive of applicant’s Class 31 goods in the nature of corn and ryegrass.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FAIRY” for squash and apples in International Class 31 and “FORCE” for corn and ryegrass in International Class 31 apart from the mark as shown.
Applicant should note; however, that should the applicant choose to amend their identification of Class 31 goods to specifically exclude squash, apples, corn, and ryegrass, this disclaimer requirement will no longer be required.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
SIGNATURE OMITTED ON APPLICATION
The following statements must be verified: That 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; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
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.
/Anna C. Burdecki/
Anna C. Burdecki
Trademark Examining Attorney
Law Office 108
Phone: (571)270-1941
anna.burdecki@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.