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:  December 16, 2019

 

INTRODUCTION

 

This Office Action is supplemental to and supersedes the previous Office Action issued on May 13, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  identification and classification of goods.  See TMEP §§706, 711.02. 

 

In a previous Office Action dated May 13, 2019, the trademark examining attorney required applicant to satisfy the following requirements:  amend the identification of goods and, if necessary, satisfy the multiple-class application requirements for each international class in the application.  The trademark examining attorney also notified applicant of two prior-filed pending applications that, if registered, may result in a refusal pursuant to Trademark Act Section 2(d) for likelihood of confusion.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  multiple-class application requirements.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  Potential Refusal: Prior-Filed Pending Application

            •  Requirement: Identification and Classification of Goods

 

Applicant must respond to all issues raised in this Office Action and the previous May 13, 2019, Office Action, within six (6) months of the date of issuance of this Office Action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

POTENTIAL REFUSAL: PRIOR-FILED PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87798753 and 88149987 precede applicant’s filing date.  See referenced applications attached to May 13, 2019 Office Action.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office Action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In the November 13, 2019 Response, applicant argues that neither prior-filed pending application cover goods sufficiently similar to the goods identified in the application.  The trademark examining attorney respectfully disagrees.  With respect to Application Serial No. 87798753, applicant argues that prior applicant’s “mirrors” are not similar to applicant’s “bathroom accessories, namely, mirrors and LED mirrors.”  In fact, prior applicant’s broad “mirrors” encompasses applicant’s narrower “bathroom accessories, namely, mirrors and LED mirrors.”  Therefore, the fact that the prior-filed application does not specifically indicate the mirrors are for use in the bathroom or include LED lights does not avoid a finding of relatedness of the relevant goods.  Furthermore, with respect to Application Serial No. 88149987, applicant contends that “umbrella stands” and “kitchen utensils; utensils for laundry purposes” are not sufficiently related to applicant’s goods.  The examining attorney, however, submits that there is ample evidence of entities producing and providing both applicant’s goods and the prior applicant’s goods in International Class 21 and marketing those goods under the same mark.  See, for example, the attached Internet evidence from Oxo®.

 

In response to this Office Action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant should note the requirement detailed below.

 

REQUIREMENT: IDENTIFICATION AND CLASSIFICATION OF GOODS

 

THIS REQUIREMENT APPLIES TO CLASSES 6, 20, AND 21 ONLY

 

The following wording in the identification of goods is indefinite and requires clarification: (1) “metal grab bars and assist bars” in International Class 6 because it is unclear what the bars are used for or what they are affixed to; (2) “mirrors, LED mirrors” in International Class 20 because it is unclear what type of mirrors applicant produces; (3) “bathroom storage containers” in International Class 20 (see the following paragraph regarding classification of this language) because it fails to specify the material of the containers or that they are for household use; (4) “laundry hampers” in International Class 20 (see the following paragraph regarding classification of this language) because it fails to specify that the hampers are for household use; (5) “plunger” in International Class 21 because the entry does not specify what kind of plunger applicant produces; and (6) “door caddies” in International Class 21 because it is unclear what the goods are used for.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Furthermore, applicant has misclassified the following goods: (1) “bathroom storage containers” is currently listed in International Class 20, but are properly classified in International Class 21; and (2) “launry hampers” is currently listed in International Class 20, but are properly classified in International Class 21.

 

Applicant may amend the identification of goods as follows, if appropriate (with suggested amendments in bold and suggested deletions in strikethrough):

 

Class 6:           Bathroom accessories, namely, metal bathrobe hooks, metal door garment hooks; metal bathtub and shower grab bars and assist bars

 

Class 11:         Bathroom accessories, namely, bathroom ventilation fans

 

Class 20:         Bathroom accessories, namely, bathroom vanity mirrors, bathroom vanity LED mirrors, shower rods, shower curtain rings and hooks, and bathroom furniture, bathroom storage containers, and laundry hampers

 

Class 21:         Bathroom accessories, namely, towel bars, towel rings, toilet paper holders, soap dishes, toilet plungers, shower caddies, and door caddies for holding _____ {specify household items, e.g., cosmetics, cleaning brushes, and towels} for household use, _____ {specify the material of the storage containers, e.g., plastic and fabric} bathroom storage containers for domestic use, and laundry hampers for domestic or household use

 

Class 24:         Bathroom accessories, namely, shower curtains and shower curtain liners

 

Class 27:         Bathroom accessories, namely, non-slip bathtub mats, non-slip shower mats, shower and bathtub treads, and bath rugs

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address the 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.

 

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 and potential 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. 

 

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.    

 

 

/Nathan C. Ranns/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 128

Phone: (571) 270-3776

Nathan.Ranns@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 December 16, 2019 for

U.S. Trademark Application Serial No. 88384088

 

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. 

 

 

/Nathan C. Ranns/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 128

Phone: (571) 270-3776

Nathan.Ranns@usp

 

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 December 16, 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.”