To: | BBK Tobacco & Foods, LLP (legal@hbiin.com) |
Subject: | U.S. Trademark Application Serial No. 88386237 - ROLLING PAPERS - N/A |
Sent: | January 15, 2020 11:34:37 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88386237
Mark: ROLLING PAPERS
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Correspondence Address:
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Applicant: BBK Tobacco & Foods, LLP
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 15, 2020
This Office action is in response to applicant’s communication filed on December 23, 2019.
In a previous Office action dated June 25, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for being merely descriptive of a feature of the applied-for goods. In addition, applicant was required to satisfy the following requirements: provide a definite identification of goods, conform to the requirements of a multiple class application, and provide additional information about the applied-for goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: definite identification of goods, multiple class application requirements. See TMEP §§713.02, 714.04.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Section 2(e)(1) refusal in Class 18. See TMEP §§713.02, 714.04.
However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE – CLASS 34
In this case, applicant’s seeks registration of ROLLING PAPERS in connection with “storage containers, namely, smokers' storage vaults for smoking accessories.” ROLLING PAPER is defined as “[a] usually rectangular piece of thin paper onto which tobacco, marijuana, or another substance is placed and then rolled up into a cylinder so that it can be smoked.” See the previously attached dictionary definition. Thus, applicant’s mark conveys that its goods are used to carry or store rolling papers. Further, third parties commonly make various types of storage containers for keeping various smoking accessories, including storing rolling papers. For example, see the attached evidence from RAW, Zig-Zag, Rolling Supreme, Rolls, and Quik Wikk. This, combined with the previously attached evidence from Elements, Randy’s Roots demonstrates that storage containers for holding smoking accessories include containers designed to hold, store, or display rolling papers.
On the other hand, applicant argues that “The containers (not yet in production) are intended for display on tables or bookshelves and to be large enough to hold a variety of smoking accessories such as lighters, tobacco in pouches or cans, ashtrays, etc.” However, the “smoking accessories” would include rolling papers. Although the goods could hold additional goods does not render the mark suggestive. “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl& Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Accordingly, the refusal to register applicant’s mark under Section 2(e)(1) of the Trademark Act is made final.
ADDITIONAL INFORMATION ABOUT THE GOODS REQUIRED – CLASS 34
Applicant provided sufficient additional information about its Class 18 goods. However, applicant’s response in Class 34 is not sufficient. Applicant has stated its Class 34 goods are “intended for display on tables or bookshelves and to be large enough to hold a variety of smoking accessories such as lighters, tobacco in pouches or cans, ashtrays, etc.” The information requirement has required applicant to provide additional information and as such, is now made final.
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
· Whether applicant’s Class 34 goods are intended to be used to store / carry / display rolling papers
· Whether applicant’s Class 34 goods can be used to store / carry / display rolling papers.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
In such case, the application will proceed for the following class only: International Class 18
ASSISTANCE
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 ffice action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Michael Eisnach
/Michael Eisnach/
Examining Attorney
Law Office 104
(571) 272-2592
michael.eisnach@uspto.gov
RESPONSE GUIDANCE