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:  January 21, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 01/10/2020.

 

In a previous Office action(s) dated 11/15/2019, the applicant was required to satisfy the following requirement(s):  Specimen- Class 31.

 

The trademark examining attorney maintains and now makes FINAL the 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:

• Specimen- Class 31
• Partial Abandonment Advisory

 

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

SPECIMEN- CLASS 31

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 31 in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). 

 

Specifically, the goods are “beverages for pets”.  However, the specimen shows the mark applied to bone broth.  Applicant argues that the broth is used as a beverage.  The examining attorney respectfully disagrees.

 

Applicant submitted a substitute specimen in the Office action response of 01/10/2020.  In the specimen, the broth product is specifically described as being used as a meal topper to add to dog food for nutrition or adding moisture to dry dog food.  The specimen also describes adding some broth to a dog’s water for added flavor and hydration.  The description clearly describes the product as an additive, and not a stand-alone beverage.

 

A beverage is defined as a liquid specifically for drinking.  See attached dictionary evidence (at

http://www.ahdictionary.com/word/search.html?q=beverage).  Whereas broth is considered to be a soup, or a liquid with the primary purpose of flavoring while cooking.  See attached dictionary evidence (at http://www.macmillandictionary.com/dictionary/american/broth).

 

Additionally, the consumer would not perceive bone broth to be a beverage.  What would be considered a beverage for a pet is the same as what would be considered beverages for humans, such as water, juice, beer, or wine.  Further, pet beverages are far more often water based, with flavoring and nutritional additives.  See attached website evidence at:

 

http://www.caninejournal.com/what-can-dogs-drink/

 

http://www.petfoodprocessing.net/articles/12816-new-brand-launches-cbd-infused-pet-beverages

 

http://dogcare.dailypuppy.com/types-liquids-can-dogs-drink-2935.html

 

http://wolfspring.dog/whats-inside/

 

http://www.petfoodindustry.com/directories/114-pet-food-product-database/listing/870-k-9-aide-wellness-drink

 

Further, if one were to look for bone broth at a store, it would be found with soups, and not with beverages.  See attached website evidence of commercial product categorization at:

 

Meijer

Broth: http://www.meijer.com/shop/en/pantry/soup/c/L3-304

Beverages:  http://www.meijer.com/shop/en/beverages/c/L2-9976

 

ShopRite

Soup and Broth:  http://www.shopritedelivers.com/Soup-Broth-C2029.aspx

 

Broth: http://www.shopritedelivers.com/Broth-C2263.aspx

Beverages:  http://www.shopritedelivers.com/Coffee-Tea-Drinks-C2012.aspx

 

Wegmans

Soup and Broth:  http://shop.wegmans.com/shop/categories/314

Beverages: http://shop.wegmans.com/shop/categories/164

 

Thus, the consumer would not understand the applicant’s goods as shown in the specimen to be a beverage for pets in class 31.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the statement of use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the statement of use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for a statement of use.”  The substitute specimen cannot be accepted without this statement.

 

Applicant, however, may not withdraw the statement of use.  See 37 C.F.R. §2.88(f); TMEP §1109.17.

 

For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

For the foregoing reasons, this requirement is maintained and made FINAL.

 

RESPONSE GUIDELINES

 

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).

 

 

/Joanna M. Shanoski/

Joanna M. Shanoski

Examining Attorney

Law Office 104

Phone: (571) 272-9707

E-mail:  Joanna.Shanoski@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 January 21, 2020 for

U.S. Trademark Application Serial No. 88397895

 

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. 

 

 

/Joanna M. Shanoski/

Joanna M. Shanoski

Examining Attorney

Law Office 104

Phone: (571) 272-9707

E-mail:  Joanna.Shanoski@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 January 21, 2020, 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.”