Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  December 06, 2019

 

This Office action is in response to applicant’s communication filed on October 24, 2019.

 

In a previous Office action dated July 9, 2019, applicant was required to satisfy the following requirements: Identification Requirement and Multiple-Class Application Requirements.

 

The trademark examining attorney maintains and now makes FINAL the requirements 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:

• Identification Requirement
• Multiple-Class Application Requirements

 

Identification Requirement

As amended, applicant has identified the following goods and services:

 

International Class 20: Furniture; Home goods, namely, candle holders, decorative foliage, garden, home accents, home décor, lighting, metal wall décor, seasonal, and vases

 

International Class 35: On-line wholesale store services featuring candle holders, decorative foliage, garden, home accents, home décor, lighting, metal wall décor, seasonal, and vases; On-line retail store services featuring candle holders, decorative foliage, garden, home accents, home décor, lighting, metal wall décor, seasonal, and vases

 

International Class 20

 

Home goods, namely, candle holders, decorative foliage, garden, home accents, home décor, lighting, metal wall décor, seasonal, and vases

 

Candle Holders

The goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 21.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Decorative Foliage

The wording in the identification of goods is misclassified and indefinite because it does not indicate the specific type of decorative foliage that applicant provides.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc.}” in International Class 26.

 

Garden

Applicant must clarify the wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not indicate the specific goods.  Further, this wording could identify goods in more than one international class.  For example, “Garden ornaments in the nature of wooden whirligigs” are in International Class 20 and “Garden gnome figurines comprised of terra cotta” are in International Class 21. 

 

Applicant may substitute the following wording, if accurate:  “Garden ornaments in the nature of wooden whirligigs.”

 

Home Accents

Applicant must clarify the wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not indicate the specific type of home accents that applicant provides.  Further, this wording could identify goods in more than one international class.  For example, “home accents in the nature of vases” are in International Class 21, and “home accents in the nature of pillows” are in International Class 20. 

 

Applicant may substitute the following wording, if accurate: “home accents in the nature of {specify the International Class 20 goods, e.g., pillows}.”

 

Home décor

Applicant must clarify the wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not identify the specific home décor goods.  Further, this wording could identify goods in more than one international class.  For example, “picture frames” are in International Class 20 and “vases” are in International Class 21. 

 

Applicant may substitute the following wording, if accurate: “home décor in the nature of {specify the International Class 20 goods, e.g., picture frames}.”

 

Lighting

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Metal wall décor

The wording in the identification of goods is misclassified and indefinite because it does not identify the specific type of metal wall décor that applicant provides.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Metal wall décor, namely, wall plaques made of common metal” in International Class 6.

 

Seasonal

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Vases

The goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 21.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 35

The wording “decorative foliage”, “garden”, “home accents”, “home décor”, and “metal wall décor” in the identification of services is indefinite and must be clarified because it does not identify the specific type of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, regarding the wording “lighting” and “seasonal”, generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Applicant may substitute the following wording, if accurate:  On-line wholesale store services featuring candle holders, decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc.}, garden ornaments in the nature of wooden whirligigs, home accents in the nature of {specify the goods, e.g., pillows}, home décor in the nature of {specify the goods, e.g., picture frames}, metal wall décor in the nature of wall plaques made of common metal, and vases; On-line retail store services featuring candle holders, decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc.}, garden ornaments in the nature of wooden whirligigs, home accents in the nature of pillows, home décor in the nature of {specify the goods, e.g., picture frames}, metal wall décor in the nature of wall plaques made of common metal, and vases.

 

If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:

 

International Class 6: Metal wall décor, namely, wall plaques made of common metal

 

International Class 20: Furniture; Home goods, namely, garden ornaments in the nature of wooden whirligigs, home accents in the nature of {specify the International Class 20 goods, e.g., pillows}, home décor in the nature of {specify the International Class 20 goods, e.g., picture frames}

 

International Class 21: candle holders; vases

 

International Class 26: Decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc}

 

International Class 35: On-line wholesale store services featuring candle holders, decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc.}, garden ornaments in the nature of wooden whirligigs, home accents in the nature of {specify the goods, e.g., pillows}, home décor in the nature of {specify the goods, e.g., picture frames}, metal wall décor in the nature of wall plaques made of common metal, and vases; On-line retail store services featuring candle holders, decorative foliage in the nature of {specify the type of decorative foliage, e.g., artificial wreaths, artificial flower arrangements, etc.}, garden ornaments in the nature of wooden whirligigs, home accents in the nature of pillows, home décor in the nature of {specify the goods, e.g., picture frames}, metal wall décor in the nature of wall plaques made of common metal, and vases

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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.

 

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 Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  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.

 

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 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).

 

 

/Brittany Colton/

Brittany Colton

Examining Attorney

Law Office 127

571-272-2572

brittany.colton@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 06, 2019 for

U.S. Trademark Application Serial No. 88391583

 

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. 

 

 

/Brittany Colton/

Brittany Colton

Examining Attorney

Law Office 127

571-272-2572

brittany.colton@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 December 06, 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.”