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:  February 01, 2020

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 16, 2020. Based on information and/or documentation in applicant’s response, the trademark examining attorney now raises the following new issue: the applicant has requested an owner change with no supporting documentation.  See TMEP §§706, 711.02. 

 

In a previous Office action dated July 16, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, failure to show the applied-for mark in use in commerce with the goods in Classes 30 and 32.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods in Classes 30 and 32, clarify the mark description, provide a translation of the foreign wording in the mark, and pay an additional TEAS Plus processing fee.

 

Based on applicant’s response, the following refusal has been obviated: failure to show use of the mark in International Class 32.  See id. 

 

The applicant has not satisfactorily responded to the other refusals/requirements, which are therefore maintained and continued, as noted below.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        NEW ISSUE:  The applicant has requested an owner name change with no supporting documentation

•        Registration of the mark is refused under Trademark Act Section 2(d)

•        The substitute specimens are not acceptable for International Class 30

•        The identification of goods in International Classes 30 and 32 is unacceptable

•        The applicant must provide a translation of the foreign wording in the mark

•        The applicant must amend the mark description

           

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

Request for Owner Change with No Supporting Documentation

Applicant has requested that the applicant name in the application be amended; however, applicant has not provided or recorded in the USPTO database ownership transfer documentation or any other documentation showing transfer of title.  Therefore, the request to amend the applicant name is denied until applicant establishes clear chain of title to the new party.  37 C.F.R. §2.61(b); TMEP §814. 

 

The owner specified in the application is “Dewi, Ratna.” In its response, the applicant proposes to amend the owner’s name to “Zaidan, Sumaya,” indicating that “she is the same person but her prior name was used in error.”  This statement is unclear, and further information is required. 

 

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, the new owner must file documentation to establish its current ownership of the application by satisfying one of the following:

 

(1)       The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR

 

(2)       The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d).  Applicant must still file a separate response to this Office action.  See id.

 

If the application was filed by the owner and the there is an inadvertent error in the applicant’s name, such as a minor typographical error or misspelling, or the name identifies a party that did not exist as of the application filing date, the application may be amended to correct the applicant’s name.  TMEP §1201.02(c).  In either case, applicant should include in the amendment request the reason for the correction (such as “ABC Corporation did not exist as of the filing date of the application,” or “Company” was inadvertently omitted from the applicant’s name in the application).  Id.

 

The following refusal and requirements are maintained and continued:

 

Section 2(d) Refusal

The refusal to register the mark under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 3398369 is maintained and continued.

 

As discussed above, the applicant’s request to change the owner to “Sumaya Zaidan” cannot be entered without additional information or evidentiary support.  As such, the current owner of the application is Ratna Dewi, and thus the application and cited registration are owned by different entities.  In addition, while the mark in the cited registration includes additional matter not present in the applicant’s mark, these differences are not sufficient to obviate the finding they are confusingly similar, as further discussed in the prior Office action.

 

Specimen Refusal—International Class 30

In its response to the specimen refusal, the applicant has provided substitute specimens.  While these specimens are acceptable for International Class 32, they are unacceptable for International Class 30 because none show use of the mark on the goods specified in that class.  Accordingly, the refusal to register the mark in Class 30 is maintained and continued.  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). 

 

The goods in Class 30 are “Filo leaves; Processed grains, namely, rice, stuffed eggplants, stuffed grape leaves, green peppers stuffed with rice.”  The substitute specimens show the mark used on, in relevant part, plain grape leaves, eggplant dip, rokak (a meat pastry), cream spread, pickles and pickled vegetables, and canned beans.  These specimens are not acceptable because none of them show the mark on the goods specified in Class 30.  The grape leaves shown in the specimen are only the grape leaves themselves, not stuffed grape leaves, and the eggplant is a dip, not stuffed eggplant.  None of the specimens show the mark on rice or green peppers stuffed with rice, or on filo leaves sold separately.  

 

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 application or amendment to allege 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). 

 

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 satisfying one of the following for International Class 30:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Identification of Goods—Classes 30 and 32

The requirement that the applicant amend the identification of goods in Classes 30 and 32 is maintained and continued.  The current identification in Classes 30 and 32 is unacceptable because it includes indefinite wording and lists goods that may be misclassified.  TMEP §1402.01.

 

In Class 30, the applicant has selected a “fill in the blank” entry from the Identification Manual, with the introductory wording “processed grains, namely.”  However, the items then specified by the applicant include items that are not processed grains.  Specifically, “stuffed eggplants, stuffed grape leaves, green peppers stuffed with rice.”  In addition, not only are these goods not processed grains, they are all food items that are properly classified in Class 29, as the primary component of each item is a processed vegetable, with the processed grain at best being the item the vegetable is stuffed with.

 

In Class 32, the applicant has selected the introductory wording “fruit juice, namely,” and then has specified various fruits, which presumably identify specific types of juice; e.g., apple juice, grape juice, and pomegranate juice.  However, the applicant has also included “nectar” and “juice,” which are indefinite because the specific type of nectar or juice is not provided.   The applicant must therefore amend this wording to further specify the nature of the goods.

 

The applicant must amend the application to adopt an acceptable identification and classification of goods.  The applicant may amend to adopt one or more of the following, if accurate:

 

INTERNATIONAL CLASS 29: Canned cooked meat; Dried beans; Dried meat; Frankfurters; Pickles; Processed beans; Processed peppers; Refried beans; Dried lentils; Stuffed eggplant; Stuffed grape leaves; Green peppers stuffed with rice.

 

INTERNATIONAL CLASS 30: Filo leaves; Processed grains, namely, rice.

 

INTERNATIONAL CLASS 32: Fruit juice, namely, apple, grape, mango, pomegranate, lemon, and kiwi juice; Herbal juices; Fruit juice; Fruit nectars.

 

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.

 

Translation of Foreign Wording Required

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  In addition, while the applicant has provided a transliteration of the non-Latin characters in the mark, the applicant must also submit either an English translation of the corresponding non-English transliterated wording or a statement that the transliterated term has no meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §809. 

 

The following transliteration and translation statement are suggested, if accurate: 

 

The English translation of “BASMA” is “SMILE”.  The non-Latin characters in the mark transliterate to “BASMA” and this means “SMILE” in English. 

 

TMEP §809.03.  See the attached translation evidence

 

Amended Mark Description Required

Applicant must delete from the description any text that does not reference things appearing in the mark, such as interpretation, assessment, or analysis of the mark elements, or indications of how the mark is or is not used or intended to be used.  A description must identify only the literal and design elements shown in the drawing.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

The following amended description is suggested, if accurate: 

 

The mark consists of three Arabic characters within an oval above a banner containing the stylized wording “BASMA”.

 

Additional Fee Required—TEAS Plus Status Lost

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Specifically, applicant failed to meet the following application filing requirements: 

 

• A translation of all non-English wording in the mark was not provided;

 

• Applicant filed a TEAS Plus application that identified one or more goods from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding goods.  At the time of filing, a TEAS Plus application must include an identification of goods and/or services from the ID Manual.  TMEP §819.01(g); see 37 C.F.R §2.22(a)(8).  By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual.  See TMEP §819.01(g). 

 

The additional fee is required even if applicant later corrects these application requirements.

 

Advisory Regarding Claim of Ownership

In its response, the applicant has included a claim of ownership of Registration Number 78892757.  This is a Serial Number, and the examining attorney presumes the applicant intended to claim ownership of Reg. No. 4154598.  Regardless, applicant’s claim of ownership will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled.  Only claims of ownership of active registrations are printed.  See 37 C.F.R. §2.36; TMEP §812.

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 and/or requirements 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.    

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(571) 272-9430

kimberly.frye@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 February 01, 2020 for

U.S. Trademark Application Serial No. 88402881

 

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. 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(571) 272-9430

kimberly.frye@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 February 01, 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.”