| To: | KODIAK CAKES, LLC (nwells@legendslaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88407044 - KODIAK - 4805.241 |
| Sent: | 7/1/2019 12:53:05 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. 88407044
MARK: KODIAK
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: KODIAK CAKES, LLC
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 7/1/2019
SEARCH FOR REFERENCES DEFERRED
Until applicant submits a sufficiently definite identification of goods and specifies the number of classes for which registration is sought by providing the filing fees for all such classes as required elsewhere in this Office action, a search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred. TMEP §704.02.
DEFINITE IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIRED
The wording in the entries listed below in the identification of goods is indefinite and overbroad, and must be clarified because it could include goods in multiple international classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. Specific examples of amended wording is provided below with respect to each entry. In addition, for assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Indefinite and Overbroad Wording
The word “clothing” and “headgear” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class, including protective clothing and headwear in Class 009, medical clothing in Class 010, and pet clothing in Class 025. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Therefore, applicant must amend the identification to specify the type of clothing and headgear with particularity. For headgear in Class 025, applicant may (1) amend “headgear” to “headwear,” if accurate to render to identification definite in Class 025, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items. Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
For all of the listed entries which specify types of “accessories”, each listed identification is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). For example, “kitchen accessories” can encompass kitchen goods in Classes 007, 008, 021. Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification. See TMEP §§1402.01, 1402.03(a).
Similarly, the wording “instruments” and “equipment” in the entries listed below must be clarified because it is indefinite and does not specify either the common generic name of each piece of equipment or instruments or the nature and purpose or function of the equipment and instruments. See TMEP §§1402.01, 1402.03. In addition, this identification is too broad and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, “yoga mats” and “yoga bolsters” are both types of sports equipment; however, “yoga mats” are in Class 027 and “yoga bolsters” and in Class 028.
Therefore, applicant must amend identifications indicating “equipment” and “instruments” to specify either (1) the common generic name of each piece of equipment or instrument or (2) the nature and purpose or function of the equipment or instruments. See TMEP §§1402.01, 1402.03.
Each of the listed entries is indefinite and overbroad. Applicant must further clarify the nature of the goods, as shown below. For “bags,” including “lunch bags,” the function and material composition is necessary to determine classification. Similarly, the particular function and material composition is necessary to determine classification for “gift cards.”
Misclassified Goods
In addition to the foregoing issues, applicant classified all of the following goods in International Class 025:
However, the proper classification for each item is shown in the Suggested Wording section, below.
Additionally, applicant has provided the application fee for only one international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Suggested Wording
Applicant may substitute the following wording, if accurate:
International Class 007: kitchen accessories, namely, {specify Class 007 accessories, e.g., electric mixers, kitchen grinders, kitchen slicers}
International Class 008: kitchen knives and pocket knives
International Class 009: clothing for protection against fir and accidents; headgear being protective helmets; magnetically encoded gift cards; sunglasses; smart phone cases and accessories, namely, {specify types of accessories, e.g., smart phone faceplates, straps and battery chargers}; computer peripherals and accessories, namely, {specify types of accessories, e.g., keyboards, headsets for use with computers, computer monitors}; tablet computer cases and accessories, namely, {specify types of accessories, e.g., keyboards, battery chargers}; binoculars and optical instruments, namely, {specify instruments, e.g., spotting scopes, telescopes}; car accessories, namely, {specify particular nature of accessories in Class 009, e.g., car stereos, car antennas, car navigation computers}; bike accessories, namely, {specify particular nature of accessories in Class 009, e.g., bicycle safety lights}; sports equipment and accessories, namely, {specify particular equipment and accessories, e.g., sports helmets, mouth guards for sports}
International Class 011: flashlights and portable headlamps; car accessories, namely, {specify particular nature of accessories in Class 011, e.g., vehicle headlights}
International Class 012: car accessories, namely, {specify particular nature of accessories in Class 012, e.g., car interior organizer bags, nets and trays specially adapted for fitting in vehicles, arm rests for vehicle seats}; bike accessories, namely, {specify particular nature of accessories in Class 012, e.g., water bottle cages, saddles, rack trunk bags, cranks}
International Class 014: watches, jewelry, key chains
International Class 016: paper gift cards; gift bags; paper lunch bags
International Class 018: satchels, backpacks, all-purpose carrying bags, credit card cases, leather goods, namely, {specify types of goods, e.g., purses and luggage}; pet accessories, namely, {specify types of accessories, e.g., leashes, collars, and pet clothing}
International Class 020: pillows; pet accessories, namely, {specify types of accessories, e.g., beds for household pets}
International Class 021: mugs, water bottles sold empty, vacuum bottles; kitchen utensils, namely, {specify particular utensils, e.g., spatulas, strainers, turners, graters}; kitchen containers; kitchen accessories, namely, {specify Class 021 accessories, e.g., kitchen mitts, non-electric kitchen grinders}; lunch bags not of paper and insulated containers for kitchen and for food; non-electric portable coolers
International Class 022: cloth bags for storage
International Class 024: bed blankets, table and bed linens and textiles, namely, {specify types of textiles, e.g., textile fabrics for use in making clothing and household furnishings}; pet accessories, namely, {specify types of accessories, e.g., pet blankets}
International Class 025: clothing, namely, tops, bottoms, t-shirts, hoodies, scarves, gloves, socks, caps, hats, beanies; headwear, footwear
International Class 027: sports equipment and accessories, namely, {specify particular equipment and accessories, e.g., yoga mats}
International Class 028: board games, stuffed and plush toys; playthings, namely, {specify types of playthings, e.g., action figures, play houses, dolls}; sports equipment and accessories, namely, {specify particular equipment and accessories, e.g., golf clubs, golf tees, tennis rackets, tennis nets, sport balls}
See TMEP §1402.01, 1402.03.
Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods. The braces should not appear in the amended identification; only the specific goods indicated, as inserted by applicant. Applicant need not amend its identification other than where specified.
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 that may be classified in numerous classes; however, applicant submitted fees sufficient for only ONE class. In a multiple-class application, a fee for each class is required. Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):
(1) List the goods 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).
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 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.
/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.