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:  July 06, 2019

 

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.

 

This application was filed with the USPTO on April 24, 2019.

 

SUMMARY OF ISSUES:

 

• Identification of services

 

Search Results

 

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

 

Identification of Services

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 035 for “parasols, statues, ornaments, coasters, rugs, mats, matting, carpets, games, toys, playthings, video game apparatus, puzzles, jams, jellies, compotes, relishes, coffee, tea, confectionery, sauces, biscuits, honey, mustard, condiments.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant has included the term “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant intends to use the mark on all of the identified services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language. 

 

The identification of services is indefinite and must be clarified because the wording “Advertising; Business administration” must be amended to “Advertising services; Business administration services” to indicate that the services are being provided for others.  The wording “Office functions” should be amended to “Providing office functions” for clarity.  The wording “publicity services” should be amended to “publicity agency services” for clarity.  The wording “retail, wholesale, internet retail or mail order retail services” must be clarified because retail services cold include a wide array of retail support services – from accounting to advertising and marketing services.  The wording “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, and teaching apparatus and instruments” must be further specified as to the goods being featured.  The wording “recording discs and recorded discs” must be specified as to the content recorded.  The wording “telecommunications apparatus” must be specified as to the type of apparatus being featured.  The wording “computer games equipment adapted for use with TV receivers” should be specified as to the type of equipment.  The wording “DVDs, CDs” must be specified as to whether they are blank or recorded with content, and if recorded, must be specified as to the subject matter of the content.  Applicant must clarify if “mail order catalogs” are goods in trade, and not for applicant’s own retail store services.  “Goods in trade” are items that an applicant sells or transports in commerce for use by others.  See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06.  Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers.  TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).  Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:  the goods are simply the conduit or necessary tool useful only to obtain applicant’s services, the goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and the goods are neither sold separately from nor have any independent value apart from applicant’s services.  In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06.  None of these factors is necessarily dispositive.  Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.  The wording “instructional and teaching material (except apparatus)” must be specified as to the field of instruction and teaching.  The wording “printed matter” must be specified as to the type of goods.  The wording “toilet bags” must be amended to “toiletry bags” and specified as to whether they are sold empty or filled with cosmetics.  The wording “frames” should be amended to “picture frames” for clarity.  The wording “sponges, brushes” must be specified as to the purpose of sponges and brushes.  The wording “articles for cleaning purposes” must be specified as to the type of goods.  The wording “glassware” must be amended to “beverage glassware” for clarity.  The wording “porcelain, earthenware” must be specified as to the goods made of porcelain and earthenware.  The wording “Mechanical tools, power tools, hand tools” must be specified as to the type of goods.  The wording “Lighting” should be amended to “lighting fixtures” for clarity.  The wording “Kitchen ranges, Cookers” must be specified as to whether they are gas or electric.  The wording “ornaments, decorations” must be specified as to the type of ornaments.  The wording “models” should be specified as to the type of models.  The wording “games” must be specified as to the type of goods.  The wording “kits” must be specified as to the purpose and components of the kits.  The wording “mints” should be amended to “mints for breath freshening” for clarity.  The wording “torches” should be further specified as to the type of goods.  The wording “compasses” should be amended to “directional compasses” for clarity.  The wording “terrariums” should be amended to “terrariums for plants” for clarity.  The wording “matting” is unclear as to the type of goods.  The wording “Cuddly toys” is unclear as to the type of goods.  The wording “game consoles” should be specified as to the type of games.  The wording “cards” should be specified as to the type of cards.  The wording “sports games” is unclear as to the nature of the goods.  The wording “bowls bags, playing bowls” is unclear as to the nature of goods.  It is unclear as to how the services of “information, advice or consultancy services relating to the aforesaid” relates to “Retail, wholesale, internet retail or mail order retail services”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  Advertising services; Business management; Business administration services; Providing office functions; Marketing services; Publicity agency services; Retail store, wholesale store, on-line retail store or mail order retail store services featuring bleaching preparations and other substances for laundry use, cleaning preparations, polishing preparations, scouring preparations and abrasive preparations; Retail store, wholesale store, on-line retail store or mail order retail store services featuring soaps, perfume, essential oils, cosmetics, hair lotions, dentifrices, and toiletries; Retail store, wholesale store, on-line retail store or mail order retail store services featuring scientific, nautical, surveying, photographic, cinematographic, optical, weighing, and teaching apparatus and instruments, in the nature of {specify type of apparatus and instruments, e.g., conductivity meters, underwater housing for cameras, cameras, cinematographic projectors, optical inspection apparatus, hairdressing training heads, artificial limbs for medical instruction purposes}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring apparatus for recording, transmission or reproduction of sound or images, blank magnetic data carriers, recording discs and recorded discs featuring {specify content}, data processing equipment and computers, computer hardware and firmware, computer software, compact discs, downloadable computer software, downloadable digital music from the Internet; Retail store, wholesale store, on-line retail store or mail order retail store services featuring telecommunications apparatus in the nature of {specify type of apparatus, e.g., telecommunication cables, portable telecommunication instant messaging devices, mobile phones}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring computer games consoles adapted for use with TV receivers, mouse mats, DVDs featuring {specify recorded content}, and CDs featuring {specify recorded content}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring printed books, address books, stationery, greetings cards, [Clarify “mail order catalogues,”], printed instructional and teaching material in the field of {specify field of instruction}, plastic materials for packaging, paper, cardboard; Retail store, wholesale store, on-line retail store or mail order retail store services featuring printed matter in the nature of {specify type of printed matter}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring pens, felt tip pens, fountain pens, ball point pens, colouring pencils, pencils, boxes of pencils, paint boxes, calendar, diary, drawings, paintings; Retail store, wholesale store, on-line retail store or mail order retail store services featuring leather and imitations of leather, animal skins, hides, trunks, handbags, purses, wallets, toiletry bags sold empty, umbrellas, parasols, walking sticks; Retail store, wholesale store, on-line retail store or mail order retail store services featuring photograph frames of silver plate, metal, resin, shell, mother of pearl or wood; Retail store, wholesale store, on-line retail store or mail order retail store services featuring small mirrors, picture frames, cushions, furniture, storage furniture, storage racks, perfume bottles and vases of glass and porcelain, glass candle holders, trinket boxes in porcelain, metal and resin; Retail store, wholesale store, on-line retail store or mail order retail store services featuring jewellery polishing cloths, household and kitchen utensils and containers not of precious metal or coated therewith, combs and cleaning sponges, {specify type of goods, e.g., make-up, scrubbing, shaving, hair} brushes; Retail store, wholesale store, on-line retail store or mail order retail store services featuring articles for cleaning purposes, namely, {specify type of “articles”}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring un-worked or semi-worked glass, except glass used in building; Retail store, wholesale store, on-line retail store or mail order retail store services featuring beverage glassware, porcelain {specify type of goods made of porcelain, e.g., mugs, flower pots, doorknobs}, earthenware {specify type of goods made of porcelain, e.g., mugs, flower pots, doorknobs}, mugs, cups, saucers, plates, drinking glasses, tableware; Retail store, wholesale store, on-line retail store or mail order retail store services featuring neck ties, belts, pyjamas, dressing gowns, candles; Retail store, wholesale store, on-line retail store or mail order retail store services featuring mechanical tools in the nature of {specify type of goods, e.g., milling cutters, gear cutters, machine tools for removing waste material}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring power tools in the nature of {specify type of power tools, e.g., drill presses, thread mills, reamers, burrs}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring hand tools in the nature of {specify type of goods, e.g., hammers, wrenches, pincers, ratchet wrenches}; Retail store, wholesale store, on-line retail store or mail order retail store services featuring cutlery, garden forks, lighting fixtures, lamps, kitchen {specify type, e.g., electric, gas} ranges, {specify type, e.g., electric, gas} cookers, bookends, tablemats of paper, garden umbrellas, [Delete “Parasols,”] statues, {specify purpose, e.g., hair, holiday, garden} ornaments, plaster statues, scale model vehicles, [Delete “Statues,”] figurines, works of art, [Delete “ornaments,”] {specify purpose, e.g., cake, Halloween, interior} decorations, garden furniture, [Delete “Statues,”] tablemats of plastic, vases, candlesticks, coasters, bird feeders, bird baths, throws, tapestries of textile, tablemats of textile, towels, [Delete “Coasters,”] coasters of textile, tea towels, aprons, artificial flowers, silk flowers, rugs, Christmas tree decorations, festive decorations and artificial Christmas trees, flowers, puzzles, toys, {specify purpose, e.g., jewelry making, candle-making, teeth whitening, first aid, fingerprint, children’s arts and crafts paper} kits, {specify type, e.g., board, video, card} games, playthings, chocolates, confectionery, biscuits, relishes, jams, pate, tea, coffee, cake, mints for breath freshening, tisanes, condiments, sauces, wrapping paper, gift wrapping paper, Christmas crackers; Retail store, wholesale store, on-line retail store or mail order retail store services featuring thermometers, weather vanes, reading glasses, hipflasks, telescopes, money boxes, sundials, {specify type, e.g., cutting, patio, candle, welding} torches, directional compasses, barometers, terrariums for {specify purpose, e.g., plants, animals, insects}, manicure sets, bottle openers, magnifying glasses, hair clips, wine stoppers, plaques, chopping boards, cufflinks, carpets, rugs, mats and [Clarify “matting,”] linoleum and other materials for covering existing floors, non-textile wall hangings, [Delete “Rugs, Mats, Matting,”] play mats, [Delete “Carpets,”] bath mats, floor coverings, door mats, wallpapers, [Delete “Games, toys and playthings,”] gymnastic and sporting articles, decorations for Christmas trees, video game consoles, [Delete “Toys,”] plush toys, [Delete “Games,”] computer game consoles, game cards, boards games, {specify type, e.g., collectible trading, trading, magnetic identify} cards; [Delete “Video game apparatus,”]; desk-top toy sports games; sports equipment, [Delete “Puzzles,”] kites, toy model kits, radio-controlled toys, remote control toys, toy sets, roulette sets, backgammon sets, domino sets, chess sets, checkers sets, badminton sets, croquet sets, archery sets, model train sets, toy building block sets, board games, dart boards, [Clarify “Bowls bags, Playing bowls,”] bowls, toy models, kaleidoscopes; Retail store, wholesale store, on-line retail store or mail order retail store services featuring meat, fish, poultry and game, meat extracts; Retail store, wholesale store, on-line retail store or mail order retail store services featuring preserved, frozen, dried and cooked fruits and vegetables; Retail store, wholesale store, on-line retail store or mail order retail store services featuring jellies, [Delete “jams,”] compotes, eggs, milk and milk products, edible oils and fats, [Delete “Jellies, Jams, Jellies, jams, compotes,”] fruit and vegetable spreads, pickles, [Delete “Relishes,”] pâtés, pates, cooked truffles, preserved truffles, cheese, ground almonds, almond butter, preserved nuts, edible nuts, dried nuts, [Delete “Coffee, tea,”] cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, and pastries [Delete “and confectionery,”] edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, [Delete “sauces,”] spices, ice, [Delete “Sauces,”] puddings, crackers, [Delete “Biscuits, Confectionery,”] chocolate, [Delete “Chocolates,”] fudge, toffee, toffees, [Delete “Tea,”] non-medicated tisanes made of tea, fruit infusions, fruit teas, [Delete “Coffee,”] coffee bags, coffee essence, coffee beans, coffee pods, gum sweets, sweets, boiled sweets, sugarfree sweets, truffles, [Delete “Honey,”] cakes, candy mints, Turkish delight, marzipan, chocolate marzipan, piccalilli, almond pastries, almond confectionery, [Delete “Mustard,”] nut confectionery, [Delete “condiments”]; [Explain “information, advice or consultancy services relating to the aforesaid”].

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or encompassed by those in the original 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).

 

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.

 

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. 

 

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  

 

 

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee@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 July 06, 2019 for

U.S. Trademark Application Serial No. 88399579

 

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. 

 

 

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee@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 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.”