Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  July 15, 2019

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On July 15, 2019, the examining attorney and Brian M. Davis, Esq. discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

1. Copy of Foreign Registration(s) Required
2. Amended Identification of Goods & Services Required
3. Multiple-Class Application Requirements

 

COPY OF FOREIGN REGISTRATION(S) REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include all copies of the foreign registration(s).  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide all copies of the foreign registration(s) from applicant’s country of origin.  If the foreign registration(s) is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

AMENDED IDENTIFICATION OF GOODS & SERVICES REQUIRED

 

The identification of goods and/or services must be clarified because many of the goods and/or services are indefinite and/or broad, and therefore, do not clearly and specifically indicate the nature of goods and/or services for which registration is sought.  Additionally, some of the goods and/or services are misclassified.  Therefore, applicant must amend the referenced wording below in accordance with the bolded, italicized guidance provided.  Please note that, in some instances, examining attorney has replaced any unacceptable wording with acceptable wording.  Finally, if applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office Action.

 

Applicant may adopt the suggested identification of goods and/or services below, if accurate.  See TMEP §1402.01.

 

·         “Clothing, namely, t-shirts, shirts, jackets, sweatshirts, hooded tops, hooded sweatshirts, pullovers, jumpers, shorts, boxer shorts, boxer briefs, underwear, underclothes, under garments, socks, scarves, dressing gowns, pyjamas, dungarees, braces _____ {specify nature of goods in class 025, e.g., as suspenders}, ties, lingerie, hosiery, bathing costumes, bathing suits, bathing trunks, bathrobes, gloves, jeans, kilts, nightwear, pajamas, trouser suits, slacks, sleeping garments, sleepwear, suits, swim wear, swimsuits, trousers, tuxedos and waistcoats, leggings, jeggings, namely, pants that are partially jeans and partially leggings, baby bibs not of paper, baby bodysuits, baby bottoms, baby tops, baby rompers, belts, Bermuda shorts, bikinis, blazers, blouses, body shapers, bomber jackets, bras, briefs, cagoules, camisoles, cargo pants, coats, costumes for use in role-playing games, costumes for use in children's dress up play, crop pants, crop tops, dance costumes, dresses, housecoats, ear bands, ear muffs, ear warmers, evening dresses, evening gowns, foundation garments worn around the midsection or thighs to keep the stomach in and create a slimming effect, G-strings, Halloween costumes, infant and toddler one piece clothing, infant sleepers, infantwear, knee highs, knickers, ladies' underwear, skirts, miniskirts, negligees, night gowns, nightshirts, nightgowns, nighties, [DELETED “nightwear,” as this wording is a duplicate] panties, pants, stockings, suspenders, play suits, polo shirts, rain wear, school uniforms, tankinis, thongs being underwear, and tights; footwear, namely, footwear for men, footwear for women, footwear not for sports, shoes, canvas shoes, sneakers, boots, slippers and flip-flops, beach footwear, beach shoes, [DELETED “boots,” as this wording is a duplicate] booties, dance shoes, dance slippers, moccasins, pumps; headgear, namely, hats, caps, beanies, skull caps, skullies, bandanas and berets, children's headwear, hats for infants, babies, toddlers and children” in International Class 025.

 

·         “Meat; foods prepared from meat, namely, _____ {specify nature of goods in class 029, e.g., packaged meals consisting primarily of meat}; prepared meals, namely, prepared meals consisting of meat and fish; snack foods, namely, potato chips, fruit-based snack foods, potato-based snack foods, potato snack foods, namely, _____ {specify nature of goods in class 029}, vegetable-based snack foods, nut-based snack foods and meat-based snack foods; prepared meals and snack foods whose main ingredients consist of or include any one of or more than one of meat, fish, poultry, game, meat extracts, preserved, dried and cooked fruits, vegetables, jellies, jams, fruit sauces, eggs, milk and milk products; milk drinks, milk predominating; flavoured milk drinks, milk predominating; dairy products, namely, _____ {specify nature of goods in class 029, e.g., creamers for beverages}; nuts, namely, processed nuts, shelled nuts and roasted nuts; raisins; potato crisps; [DELETED “potato chips;” as this wording is a duplicate] edible oils and fats; soups; beef jerky; cheese; chicken nuggets; dairy-based spreads; dairy-based dips; drinking yogurts; French fries; peanut butter; refrigerated food package combinations consisting primarily of meat, cheese or processed vegetables for purposes of creating a sandwich; _____ {specify nature of goods in class 029, e.g., preserved} fish; _____ {specify nature of goods in class 029, e.g., processed}  anchovies; caviar; tinned fish; foods prepared from fish, namely, _____ {specify nature of goods in class 029, e.g., packaged meals consisting primarily of fish}; poultry; foods prepared from poultry, namely, _____ {specify nature of goods in class 029, e.g., packaged meals consisting primarily of poultry}; game; foods prepared from game, namely, _____ {specify nature of goods in class 029, e.g., packaged meals consisting primarily of game}; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, marmalade, compotes; apple purée; tomato purée; [RE-CLASSIFIED “cranberry sauce;” as these goods are misclassified and belong in class 030] hummus; meat jellies; tahini, namely, sesame seed paste; eggs; milk and milk products excluding ice cream, ice milk and frozen yogurt; butter; margarine; [RE-CLASSIFIED “buttercream;” as these goods are misclassified, belong in class 030, and are also indefinite and require further clarification] cream; milk beverages, milk predominating; milk shakes; soya milk; tofu; [RE-CLASSIFIED “desserts made from milk products;” as these goods are misclassified and belong in class 030] whipped cream; yoghurt; [RE-CLASSIFIED “yoghurt desserts;” as these goods are misclassified and belong in class 030] _____ {specify nature of goods e.g., candied} fruit snacks; vegetable-based snack foods; [RE-CLASSIDIED “maize snacks;” as these goods are misclassified, belong in class 030, and are also indefinite and require further clarification] frozen vegetables; frozen fruits; meat products, namely, _____ {specify nature of goods in class 029}; processed marine products, namely, _____ {specify nature of goods in class 029}; processed vegetables and processed fruits; fruits and vegetables dried and cooked” in International Class 029.

 

·         “Coffee; tea; cocoa; chocolate; drinking chocolate, namely, _____ {specify nature of goods in class 030, e.g., chocolate-based beverages}; rice; tapioca; sago; flour and preparations made from cereals, namely, _____ {indicate specific items}; baked goods, namely, _____ {specify nature of goods, e.g., crumbles}; biscuits; cakes; pasta; pasta sauces; bread; rolls; baps, namely, bread rolls; crackers; croissants; bread sticks; baguettes; pastries; pies; fruit pies; meat pies; vegetable pies; pastries, namely, pasties; pizzas; confectionery, namely, _____ {specify nature of goods in class 030, e.g., pastilles}; sweets; candies; bonbons; chews, namely, _____ {specify nature of goods in class 030}; chocolates; ices; sugar, honey, treacle; breakfast cereal; porridge; cereal bars; yeast, baking-powder; salt; mustard; vinegar; sauces [DELETED “(condiments)”]; chocolate sauces; fruit sauces; cheese sauces; meat sauces; tortilla chips; spices; rice-based snack food; maize-based snack food; [DELETED “ice” as this is a duplicate]; brown rice; [RE-CLASSIFIED “unpolished barley;” as these goods are misclassified, belong in class 031, and are indefinite and also require clarification] threshing barley, namely, _____ {specify nature of good in class 030, e.g., husked barley}; edible flour; sandwiches; hamburger sandwiches; hot dog sandwiches; beverages, namely, beverages made of coffee or tea, chocolate food beverages not being dairy-based or vegetable based, cocoa beverages with milk, prepared cocoa and cocoa-based beverages, prepared coffee and coffee-based beverages and tea-based beverages with fruit flavoring; bread rolls; buns; cup cakes; brownies; toffee; fudge; ginger bread; bagels; liquorice; non-medicated lozenges; _____{specify nature of goods in class 030, e.g., candy} mints; candy; bubble gum; chewing gum; chocolate bars; chocolate covered fruit, nuts, popcorn, pretzels and raisins; peanut confectionery, namely, _____ {specify nature of goods, e.g., peanut flavored candy}; peppermint _____ {specify nature of goods, e.g., candy}; boiled sweets; candy rock; popcorn; microwave popcorn; waffles; ice cream; ice cream desserts; ice cream drinks; cookies; cookie dough; cookie mixes; cotton candy; candy bars; cereal-based snack foods; rice-based snack foods; wheat-based snack foods; _____ {specify nature of goods in class 030, e.g., grain-based} food bars; chocolate-based snack foods; pasta-based snack foods; foodstuffs made from dough, namely, [RE-WORDED “dough-based pockets with filling” as this wording is no longer acceptable] dough-enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of meats, poultry, fish, fruits and vegetables or cheese, and [RE-WORDED “dough-based pockets with filling” for the same reason as above] dough-enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of pasta or rice; [DELETED “pies, pasties;” as these wordings are duplicates] sweet and savory products, all having a pastry case or pastry shell, namely, pastries; pizza; pasta dishes, namely, prepared pasta and prepared or packaged meals consisting primarily of pasta; prepared meals consisting of pasta and rice; sherbets; cheesecake; confectionery for decorating Christmas trees; dessert puddings; donuts; doughnuts; dried pasta; flapjacks; ketchup; sauces; lollipops; marshmallow; marshmallow squares; muesli; muesli bars; oatmeal; pancakes; puffed corn snacks; cranberry sauce; buttercream _____ {specify nature of goods, e.g., icing, filings for cakes}; desserts made primarily from milk products; desserts made primarily from yoghurt; _____ {specify nature of snacks in class 030};snacks made primarily from maize _____ {specify, e.g., flour}” in International Class 030.

 

·         “_____ {specify nature in class 031, e.g., Live} fish; _____ {specify nature in class 031, e.g., live} anchovies; unpolished barley, namely, unprocessed barley” in International Class 031.

 

·         “Beers; mineral and aerated waters and other non-alcoholic beverages, namely, _____ {specify nature of other non-alcoholic beverages, e.g., carbonated beverages}; fruit beverages and fruit juices; syrups and other preparations for making _____ {specify type of beverages in class 032} beverages, namely, _____ {specify nature of other preparations, e.g., concentrates}; [DELETED “aerated water;” as this wording is a duplicate] tonic water; aloe vera drinks; non-alcoholic aperitifs; non-alcoholic beer; preparations for making _____ {specify type of beverages in class 032} beverages, namely, _____ {specify nature of goods in class 032}; non-alcoholic cider; non-alcoholic cocktails; essences for making non-alcoholic beverages; [DELETED “fruit juices; fruit juice;” as these wordings are duplicates] non-alcoholic fruit nectars used in the preparation of beverages; ginger beer; isotonic beverages; lemonade; non-alcoholic fruit extracts used in the preparation of beverages; smoothies; soda water; tomato juice; vegetable juices; fruit drinks; non-alcoholic beer-flavoured soft drinks; _____ {specify type of beverage in class 032} beverage production preparations, namely, _____ {specify nature of preparations in class 032}” in International Class 032.

 

·         “Alcoholic beverages except beer; spirits; whisky; gin; rum; vodka; wines; prepared cocktails, alcoholic; aperitifs; liqueurs; pre-mixed alcoholic drinks, other than beer-based; cider” in International Class 033.

 

• “Advertising services; marketing services; the bringing together, for the benefit of others, of a variety of goods, namely, perfumes, fragrances, cosmetics, clothing, footwear, headgear, jewellery, watches, badges, flasks, hipflask, tankards, bags, wallets, purses, pre-recorded music and video recordings, downloadable music and video recordings, sheet music, musical instruments, and parts, fittings and accessories for musical instruments and plectrums, enabling customers to conveniently view and purchase the goods in the field of _____ {specify, e.g., general consumer merchandise}; the bringing together, for the benefit of others, of a variety of goods, namely, printed matter, books, calendars, pictures, prints, posters, stickers and decalcomanias, patches, mugs, glasses, skateboards, skate decks, skateboard wheels, bottle openers, keyrings, blankets and bandanas, enabling customers to conveniently view and purchase those goods in the field of _____ {specify, e.g., general consumer merchandise}; the bringing together, for the benefit of others, of a variety of goods, namely, perfumes, fragrances, cosmetics, clothing, footwear, headgear, jewellery, watches, flasks, hipflask, tankards, bags, wallets, purses, pre-recorded music and video recordings, downloadable music and video recordings, sheet music, musical instruments, and parts, fittings and accessories for musical instruments, enabling customers to conveniently view and purchase those goods from a catalogue by mail order or by means of telecommunications; the bringing together, for the benefit of others, of a variety of goods, namely, badges, plectrums, printed matter, books, calendars, pictures, prints, posters, stickers and decalcomanias, patches, mugs, glasses, skateboards, skate decks, skateboard wheels, bottle openers, keyrings, blankets and bandanas, enabling customers to conveniently view and purchase those goods from a catalogue by mail order or by means of telecommunications; [DELETED “shop”] retail store services [RE-worded “connected with”] featuring perfumes, fragrances, cosmetics, clothing, footwear, headgear, jewellery, watches, badges, flasks, hipflask, tankards, bags, wallets, purses, pre-recorded music and video recordings, downloadable music and video recordings, sheet music, musical instruments, and parts, fittings and accessories for musical instruments and plectrums; [DELETED “shop”] retail store services [RE-worded “connected with”] featuring printed matter, books, calendars, pictures, prints, posters, stickers and decalcomanias, patches, mugs, glasses, skateboards, skate decks, skateboard wheels, bottle openers, keyrings, blankets and bandanas; mail order retail services [RE-worded “connected with”] featuring perfumes, fragrances, cosmetics, clothing, footwear, headgear, jewellery, watches, badges, flasks, hipflask, tankards, bags, wallets, purses, pre-recorded music and video recordings, downloadable music and video recordings, sheet music, musical instruments, and parts, fittings and accessories for musical instruments and plectrums; mail order retail services [RE-worded “connected with”] featuring printed matter, books, calendars, pictures, prints, posters, stickers and decalcomanias, patches, mugs, glasses, skateboards, skate decks, skateboard wheels, bottle openers, keyrings, blankets and bandanas; electronic shopping retail services connected with perfumes, fragrances, cosmetics, clothing, footwear, headgear, jewellery, watches, badges, flasks, hipflask, tankards, bags, wallets, purses, pre-recorded music and video recordings, downloadable music and video recordings, sheet music, musical instruments, and parts, fittings and accessories for musical instruments, and plectrums; [RE-WORDED “electronic shopping”] online retail store services [RE-worded “connected with”] featuring printed matter, books, calendars, pictures, prints, posters, stickers and decalcomanias, patches, mugs, glasses, skateboards, skate decks, skateboard wheels, bottle openers, keyrings, blankets and bandanas; information, advisory and consultancy services in relation to the aforesaid services” in International Class 035.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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

 

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 Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted fees sufficient for only six 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

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(s) and/or requirement(s) 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.

 

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.  

 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 July 15, 2019 for

U.S. Trademark Application Serial No. 88385510

 

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. 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 July 15, 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.”