To: | Valiant Entertainment LLC (nzoubek@rlfllp.com) |
Subject: | U.S. Trademark Application Serial No. 88403969 - SHADOWMAN - N/A |
Sent: | July 11, 2019 02:32:57 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88403969
Mark: SHADOWMAN
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Correspondence Address: |
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Applicant: Valiant Entertainment LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
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 11, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On July 10, 2019, the examining attorney and Nancy Zoubek discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
The identification of goods for International Class 21 contains wording that must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In particular, the wording “containers for beverages and food” is overly broad because it could include insulated or household containers for beverages and food, which are in International Class 21; and plastic containers for use in the food industry, which are in International Class 20. Applicant is also advised that this description appears twice; and therefore should be deleted or modified. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicative entry from the identification prior to registration.
Additionally, the wording “glassware” is too broad because it could include laboratory glassware in International Class 14 or beverage glassware in International Class 21.
The wording “water bottles and containers” is too broad because it could include empty water bottles in International Class 21 or bottled water in International Class 32. The nature of the containers must also be clarified.
The wording “insulators for food and beverage containers” must be clarified by indicating the form of the containers, such as insulated sleeve holders for bottles and cans.
Lastly, the wording “tableware, namely, … utensils” is too broad because it could include flatware, which is International Class 8, as well as serving or food preparation utensils, which are in International Class 21.
For example, applicant may adopt the following wording, if accurate:
International Class 8: Tableware, namely, utensils, namely, {specify goods in Class 8, e.g., flatware being knives, forks, and spoons}
International Class 9: glassware, namely, {specify goods in Class 9, e.g., laboratory glassware}
International Class 20: containers for beverages and food, namely, {specify goods in Class 20, e.g., plastic containers and covers for the goods industry}
International Class 21: Beverage ware; containers for beverages and food, namely, {specify goods in Class 21, e.g., insulated
containers for food and beverages, household containers for food}; coffee mugs; glassware, namely, {specify goods in Class 21, e.g., beverage
glassware}; water bottles and containers, namely, namely, {specify goods in Class 21, e.g., water bottles sold empty}; insulators for food and
beverage containers, namely, {specify goods in Class 21, e.g., insulated sleeve holders for bottles and cans}; containers for food and beverages;
lunch bags, namely, thermal insulated bags for food or beverages; insulating sleeve holder for beverage cups, bottles and cans; bottle openers; lunch boxes; cosmetic utensils, namely, combs,
hair-brushes, toothbrushes, toothbrush cases; tableware, namely, plates, bowls and utensils, namely, {describe utensils in Class 21, e.g., serving forks, serving
spoons, mixing spoon}; piggy banks; soap dispensers; waste baskets
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
(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 four classes; however, applicant submitted a fee(s) sufficient for only one 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.
Advisory on Moving Goods and Services between Companion Applications
Section 1402.08 of the Trademark Manual of Examining Procedure sets forth the conditions under which, the applicant may amend to move items of goods or services from one application to another if an applicant has filed separate applications to register the same mark.
In particular, the application from which the item is to be moved must be filed on or before the filing date of the application to which it is to be moved. TMEP §1408.08.
The amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. Id.
Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette. Id.
Goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. In applications under §1, the applicant may request to move goods/services under a §1(b) basis to a companion application that includes goods/services in the same class, but which are under a §1(a) basis, or vice versa. Id.
The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. Id. It is noted that the amendments may be accomplished with an Examiner’s Amendment if both of the subject applications are being handled by the same examining attorney.
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
How to respond. Click to file a response to this nonfinal Office action.
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.
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE