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 13, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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).

 

SUMMARY OF ISSUES:

• Cannot Assert Section 1(a) and Section 1(b) for Identical Goods and Services
• Identification and Classification of Goods and Services
• Insufficient Fee – Application

 

Cannot Assert Section 1(a) and Section 1(b) for Identical Goods and Services

 

Applicant has asserted both use of the mark in commerce under Section 1(a) and a bona fide intent to use the mark in commerce under Section 1(b) for the following identical goods and/or services:  Providing information, ideas, commentary, and advice in the fields of parenting, family living, family health, child development, and mothering; providing information, ideas, commentary, and advice in the fields of parenting, family living, family health, child development, and mothering via social media; providing continuing online videos featuring information, ideas, commentary, and advice on parenting, family living, family health, child development, and mothering; accessories; jewelry; handbags and totes; clothing; hats; socks; gloves; belts; hair bows; headbands; home goods; pillows; throws; mugs; canteens; coolers; travel containers; picture frames; plates; artwork; inspirational quotes; printed matter, namely, inspirational quotes; journals; and water bottles. 

 

However, an applicant may not assert both use and intent to use for identical goods or services in the same application.  37 C.F.R. §2.34(b).  Accordingly, applicant must either (1) delete one of these bases for these goods and/or services or (2) divide these goods and/or services between the two bases, as appropriate.  See TMEP §806.02(b).

 

Identification and Classification of Goods and Services

 

First, the wording “providing information, ideas, commentary, and advice in the fields of parenting, family living, family health, child development, and mothering” in the identification of services is indefinite and too broad and must be clarified because the wording does not indicate with adequate specificity the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b).  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Next, the wording “providing continuing online videos featuring information, ideas, commentary, and advice on parenting, family living, family health, child development, and mothering” in the identification of services is indefinite and must be clarified because this wording may encompass downloadable videos classified in Class 009 as well as online non-downloadable videos in Class 041.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, the applicant must indicate whether the videos are downloadable or non-downloadable and properly classify.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Additionally, the identification for “accessories” in International Class 044 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).  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).  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Also, the wording “artwork” in the identification of goods is indefinite and must be clarified because this wording may encompass goods classified in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods as well as the material composition of the goods.  See TMEP §1402.01.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Next, the wording “inspirational quotes” and “printed matter, namely, inspirational quotes” in the identification of goods is indefinite and must be clarified because the applicant must specify the medium on which the quotes are transmitted as well as the form of the printed matter.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Also, the term “journals” in the identification of goods is indefinite and must be clarified because the applicant must indicate whether the journals are blank or specify the field/subject matter of the journals.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Next, the term “coolers” and “travel containers” in the identification of goods is indefinite and must be clarified because these terms may encompass coolers and containers in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, the applicant must specify further the type of coolers and well as the nature of the travel containers.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Additionally, the wording “home goods” in the identification of goods 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, this wording could encompass bath linen and bed linen in Class 024, lamps in Class 011, furniture in Class 020 or rugs in Class 027.  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Next, the word “clothing” 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.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).  Please see suggested wording that the applicant may adopt appearing below in bold lettering.

 

Finally, applicant has classified all of the goods and services in International Class 044.   However, the proper classification for each item is set forth below in Classes 009, 011, 014, 016, 018, 020, 021, 024, 025, 026, 027, 041, 042, 044 and 045. 

 

Additionally, applicant has provided the application fee(s) for only one international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  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 class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) 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.  Please see explained below under “Multiple-Class Application Requirements” section.

 

Applicant may substitute the following wording, if accurate: 

 

Class 009:        “Downloadable continuing videos featuring information, ideas, commentary, and advice on parenting, family living, family health, child development, and mothering, via the Internet”

 

Class 011:        “Home goods, namely, lamps”

 

Class 014:        “Jewelry, jewelry accessories, namely, jewelry charms”

 

Class 016:        “Artwork, namely, art pictures, art prints and works of art made of paper; paper stationery with inspirational quotes imprinted thereon; printed matter, namely, books, magazines and journals in the field of inspirational quotes; blank journals”

 

Class 018:        “Handbags; totes; travel bags, cases and trunks”

 

Class 020:        “Pillows; picture frames; home goods, namely, furniture”

 

Class 021:        “Mugs; canteens; non-electric portable coolers; travel mugs; plates; water bottles sold empty”

 

Class 024:        “Home goods, namely, bath towels, bed sheets, textile tablecloths; throws”

 

Class 025:        “Clothing, namely, shirts, pants, coats, dresses; hats; socks; gloves; belts; headbands”

 

Class 026:        “Hair bows”

 

Class 027:        “Home goods, namely, rugs”

 

Class 041:        “Providing information, ideas, commentary, and advice in the fields of parenting concerning the education and entertainment of children, and mothering concerning the education of children; providing information, ideas, commentary, and advice in the fields of parenting concerning the education and entertainment of children, and mothering concerning the education of children via social media; providing continuing online, non-downloadable videos featuring information, ideas, commentary, and advice on parenting, family living, family health, child development, and mothering”

 

Class 042:        “Providing information, ideas, commentary, and advice on research in the field of child development; providing information, ideas, commentary, and advice on research in the field of child development via social media”

 

Class 044:        “Providing information, ideas, commentary, and advice in the fields of parenting concerning the health of children, nutrition for family living, family health and mothering concerning breastfeeding; providing information, ideas, commentary, and advice in the fields of parenting concerning the health of children, nutrition for family living, family health and mothering concerning breastfeeding via social media”

 

Class 045:        “Providing information, ideas, commentary, and advice in the fields of parenting concerning intrafamily relationships, family living concerning intrafamily relationships, and mothering concerning intrafamily relationships; providing information, ideas, commentary, and advice in the fields of parenting concerning intrafamily relationships, family living concerning intrafamily relationships, and mothering concerning intrafamily relationships via social media”

 

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.

 

Insufficient Fee – Application

 

The application identifies goods and/or services that are classified in at least 12 classes; however, applicant submitted a fee(s) sufficient for only one class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Multiple-Class Application Requirements - Section 1(a)

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least twelve classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class(es) 042 and 045; and applicant needs a specimen for class(es) 009, 011, 014, 016, 018, 020, 021, 024, 025, 026, 027, 041 and 044.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  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. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Multiple-Class Application Requirements – Sections 1(b)

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 12 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.

 

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  

 

 

/Natalie Polzer/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 272-4103

natalie.polzer@uspto.gov (not for formal responses)

 

 

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 13, 2019 for

U.S. Trademark Application Serial No. 88407108

 

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. 

 

 

/Natalie Polzer/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 272-4103

natalie.polzer@uspto.gov (not for formal responses)

 

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 13, 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.”