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 30, 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 OF OFFICE’S DATABASE OF MARKS

 

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:

• Specimen Refusal
• Identification and Classification of Goods and Services
• Multiple-Class Application Requirements

 

SPECIMEN REFUSAL

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 035 in the application.  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). 

 

In this case the applicant has submitted specimens showing use of the mark on an Amazon.com page and on a bag containing a rectangular sign.  However, neither of these specimens show use of the mark in connection with applicant’s Class 035 services, as is required.  With regard to the submitted webpage specimen, the specimen shows the applied-for mark in use on an Amazon.com page; however, the specimen does not show the mark being used in connection with the online retail store services identified in the application.  Instead, the specimen shows that the online retail store services are being provided by Amazon, through which consumers can purchase applicant’s goods.  In addition, the product packaging specimen showing use of the mark on a bag containing a rectangular sign.  However, while product packaging is a generally acceptable specimen to show use of a mark in connection with goods, it does not show the mark being used in connection with the Class 035 services identified in the application.   See In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii). Therefore, this specimen does not show the applied-for mark in connection with applicant’s Class 035 services, as is required.

 

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.  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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(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 and (b) shows the mark in actual use in commerce for the services identified in the application.  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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

Applicant must clarify the wording “Janitorial supplied, namely . . . recycle bins” in the identification of services in International Class 035 because it is indefinite, too broad, and misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because applicant must specify whether the recycle bins are of metal or non-metal and indicate that the bins are for commercial use.  This wording is also misclassified, and could identify goods in more than one international class.  For example, “metal recycling bins for commercial use” in in International Class 006, while “non-metal recycling bins for commercial use” is in International Class 020. 

 

Applicant must clarify the wording “storage containers” in the identification of services in International Class 035 because it is indefinite, too broad, and misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because applicant must specify whether the storage containers are of metal, plastic, or paper, and if made of plastic, indicate whether they are for domestic or commercial/industrial use.   This wording is also misclassified, and could identify goods in more than one international class.  For example, “general purpose metal storage containers” in in International Class 006, “storage containers made of paper” is in International Class 016, “plastic storage containers for domestic use” in in International Class 021, and “plastic storage containers for commercial or industrial use” is in International Class 020. 

 

Applicant must clarify the wording “mixers” in the identification of services in International Class 035 because it is indefinite, too broad, and misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because applicant must specify whether the mixers are electric or non-electric in nature.   This wording is also misclassified, and could also identify goods in more than one international class.  For example, “electric mixers” is in International Class 007, while “non-electric food mixers” is in International Class 021.

 

The wording “shakers” in the identification of services is indefinite and must be clarified because applicant must specify the type of shakers (e.g., salt and pepper shakers, cocktail shakers, etc.).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, this wording appears to identify goods properly classified in International Class 021.

 

The wording “menu bands” in the identification of services is indefinite and must be clarified because applicant must more clearly indicate that the goods are in the nature of bands specially adapted for securing printed menu inserts to menu covers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, this wording appears to identify goods properly classified in International Class 016.

 

In addition to the goods discussed above that applicant has incorrectly classified in International Class 035, applicant has also classified “Janitorial supplies, namely, utility carts, service carts, trash cans”, “Restaurant equipment, namely, metal shelving”, “tables of metal”, “folding tables”, “folding chairs”, “Restaurant complaint signs non-luminous and non-mechanical, of metal”, “wet umbrella bags”, “water pitchers”, “serving platters”, “menu covers”, and “check presenters” in International Class 035.  However, “utility carts” and “service carts” are properly classified in International Class 012, while “trash cans” are properly classified in International Class 021.  In addition, “metal shelving”, “tables of metal”, “folding tables”, and “folding chairs” are properly classified in International Class 020, “Restaurant complaint signs non-luminous and non-mechanical, of metal” is properly classified in International Class 006, “wet umbrella bags” is properly classified in International Class 018, “water pitchers” and “serving platters” are properly classified in International Class 021, and “menu covers” and “check presenters” are properly classified in International Class 016.

 

Therefore, applicant may respond by (1) adding International Classes 006, 007, 012, 016, 018, 020, and 021 to the application and reclassifying these goods in the proper international class, (2) deleting “Janitorial supplies, namely, utility carts, service carts, trash cans, recycle bins. Restaurant equipment, namely, metal shelving; tables of metal; folding tables, folding chairs, storage containers, blenders, mixers, shakers. Restaurant complaint signs non-luminous and non-mechanical, of metal, wet umbrella bags, water pitchers; serving platters; menu covers; menu bands, check presenters” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  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 requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate (Examining Attorney’s suggestions in bold font): 

 

Class 006:  Janitorial supplies, namely, metal recycle bins for commercial use; general purpose metal storage containers; restaurant complaint signs non-luminous and non-mechanical, of metal

 

            Class 007:  Electric food blenders; electric mixers

 

            Class 012:  Janitorial supplies, namely, utility carts and service carts

 

Class 016:  Storage containers made of paper; menu covers; menu bands, namely, bands specially adapted for securing printed menu inserts to menu covers; check presenters

 

Class 018:  Wet umbrella bags

 

Class 020:  Janitorial supplies, namely, non-metal recycle bins for commercial use; restaurant equipment, namely, metal shelving; tables of metal; folding tables; folding chairs; plastic storage containers for commercial or industrial use

 

Class 021:  Janitorial supplies, namely, trash cans; plastic storage containers for domestic use; non-electric food blenders; non-electric food mixers; salt and pepper shakers; cocktail shakers; water pitchers; serving platters

 

Class 035:  On-line retail department store services; on-line retail store services featuring a wide variety of consumer goods of others; on-line retail store services featuring kitchen and office equipment

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 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 eight classes; however, applicant submitted a fee sufficient for only one class.  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 006; and applicant needs a specimen for classes 007, 012, 016, 018, 020, 021, and 035.  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.

 

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.

 

DOMESTIC PRO SE APPLICANT – COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

ASSISTANCE

 

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. 

 

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  

 

 

Laura Taraban

/Laura Taraban/

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 30, 2019 for

U.S. Trademark Application Serial No. 88425911

 

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. 

 

 

Laura Taraban

/Laura Taraban/

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 30, 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.”