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 20, 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.

 

SUMMARY OF ISSUES:

• PRIOR PENDING APPLICATION ADVISORY
• IDENTIFICATION OF GOODS REQUIREMENT
• DISCLAIMER REQUIREMENT

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

ADVISORY:  PRIOR-PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88175771 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

 

The wording "vegetable-based entrees," "quick-frozen vegetable dishes," "milk products," "tomato juice for cooking," "packaged pasta," "whole meal pasta," "ready-made dishes containing pasta," "dumplings," "preparations for making up into sauces," "preparations made from cereals," "preparations for bakery products," "boxed lunches," "pizza bases," "semolina," "cereal preparations," "condiments," "ferments for pastes" and "cake powder" in the identification of goods is indefinite and must be clarified because the nature of the goods must be clearly identified.  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.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may substitute the following wording, if accurate:

 

IC 029:  Prepared meals primarily consisting of meat and fish; vegetable-based entrees in the nature of {specify definite frozen vegetable dishes in Class 029, e.g., bagged cut vegetables}; pre-cooked soup; potato based gnocchi; cheese dips; mixes for making soup; quick-frozen vegetable dishes in the nature of {specify definite frozen vegetable dishes in Class 029, e.g., bagged cut vegetables}; frozen meat; frozen fish; prepared meals consisting principally of vegetables; foods made from fish, namely, fish jelly, fish preserves, fish cakes, fish mousse; fish-based foodstuffs namely, preserved fish, tinned fish, smoked fish; edible oils; broth; soups; vegetable, preserved; cooked vegetables; cream; cheese; vegetable soup preparations; vegetable juices for cooking; milk products{specify common commercial name of Class 029 goods, e.g., curdled milk}; preparations for making soup; tomato purée; vegetable salads; {specify common commercial name of Class 029 goods, e.g., tomato extracts} in the nature of tomato juice for cooking; mushrooms, preserved; fish, preserved; meat, preserved; meat, tinned; vegetables, tinned, canned vegetables; tomato paste; vegetable marrow paste; eggplant paste; vegetable-based cream

 

IC 030:  Pasta; pasta containing stuffing; fresh pasta; packaged pasta in the nature of {specify common commercial name of definite Class 030 good, e.g., packaged meal mixes consisting primarily of pasta}; puff pastry; dried pasta; whole meal pasta in the nature of {specify common commercial name of definite Class 030 good, e.g., packaged meal mixes consisting primarily of pasta}; deep frozen pasta; bread doughs; pizza dough; alimentary paste; pasta-based prepared meals; rice-based prepared meals; pasta sauce; ready-made dishes containing pasta in the nature of {specify definite type of dish, e.g., freeze-dried dishes with the main ingredient being pasta}; vegetable based seasonings for pasta; macaroni with cheese; frozen meals consisting primarily of pasta; fish dumplings; flour-based gnocchi; tortellini; dumplings, namely, {specify definite type of dumplings, e.g., sweet dumplings}; ravioli; meat gravies; preparations for making up into sauces in the nature of {specify common commercial name of definite Class 030 good, e.g., curry paste}; flour; preparations made from cereals in the nature of {specify common commercial name of definite Class 030 good, e.g., cereal based snack food}; preparations for bakery products in the nature of {specify common commercial name of definite preparation in Class 030, e.g., flour}; sauces for rice; ready-made sauces; relish; sauces; dressings for salad; tomato sauce; lasagna; frozen dough; frozen pastries; frozen pastry stuffed with meat and vegetables; boxed lunches in the nature of {specify common commercial name of definite Class 030 good, e.g., packaged meals} consisting primarily of rice, with added meat, fish or vegetables; pastries consisting of vegetables and fish; pizza; fresh pizza; pizza bases in the nature of {specify common commercial name of definite Class 030 good, e.g., pizza crust mixes}; pizza crust; semolina in the nature of {specify common commercial name of definite Class 030 good, e.g., pasta}; processed semolina; aromatic preparations for food namely, food flavorings, herbs for food purposes, spices, vinegar; cereal preparations in the nature of {specify common commercial name of definite class 030 good, e.g., cereal based snack food}; condiments in the nature of {specify common commercial name of definite Class 030 good, e.g., pepper sauce}; crepes; ferments for pastes in the nature of {specify common commercial name of definite Class 030 good, e.g., fermented hot pepper paste for use as a seasoning}; cake powder in the nature of {specify common commercial name of definite Class 030 good, e.g., cake mixes}; sponge cake; macaroni; noodles; buns; sandwiches; pastries; rice; spaghetti; vermicelli; meat pies; crackers, rice cakes; quiches; cereal-based snack food; rice-based snack food; garden herbs, preserved seasonings; noodle-based prepared meals; cheeseburger sandwiches; bread; dough; rice pulp for culinary purposes; flour-based dumplings; freeze-dried dishes with the main ingredient being rice; freeze-dried dishes with the main ingredient being pasta

 

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.

 

DISCLAIMER REQUIREMENT

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “BOWLS” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of a characteristic and/or feature use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from The American Heritage Dictionary shows this wording means "a hemispherical vessel, wider than it is deep, used for holding food or fluids."  Thus, the wording merely describes applicant’s goods because they include frozen entrees, packaged pasta meals and various other entrees which are commonly featured or provided in such a vessel (or bowl).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “BOWLS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE GUIDELINES

 

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 requirement 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  

 

 

Radcliff, Brent

/Brent M. Radcliff/

Examining Attorney

Trademark Law Office 123

(571) 270-0855

brent.radcliff@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 20, 2019 for

U.S. Trademark Application Serial No. 88427082

 

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. 

 

 

Radcliff, Brent

/Brent M. Radcliff/

Examining Attorney

Trademark Law Office 123

(571) 270-0855

brent.radcliff@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 20, 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.”