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 09, 2019

 

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

 

Search

 

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).

 

Classification/Identification of Goods Unacceptable

 

Several portions of the identification of goods are indefinite and must be clarified because the wording fails to sufficiently describe the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Further, applicant’s “abaci” goods appear to be misclassified as “abacuses” are properly classified in International Class 9. If the goods are “toy abacuses” then the wording can be amended to stay in Class 28. The examining attorney has reprinted the entire identification of goods below and has indicated where additional clarification is required and has made suggestions where appropriate.  Applicant may adopt the following identification, if accurate:

 

Class 9: “Abacuses”

 

Class 16: “Arts and craft paint kits, paint brushes, markers, color pencils, drawing pads, paper, construction paper pads; magnetic drawing boards; children's easels; stationery sets for making art, collage and crafts; glues for stationery or household use {suggested for clarity} and gel pens; magnetic counting and learning boards”

 

Class 27: “Alphabet and number mats for use on a play area surface”

 

Class 28: “Toys, namely, toy animals, toy animal figurines, toy insects, foam and plastic animal figurines and weapons, toy dinosaurs and sea animals, toy mountains; toy walker wagons, push along toys, animal ride-on toys; toy ramp racers; marble races; toy stackers; toy building blocks; foam blocks being toys for building {suggested for clarity}, textured blocks being toys for building {suggested for clarity}, infant development toys, namely, {suggested for clarity} shape sorters, and shape sorting cubes; toy trains, train engines, train tracks, toy train tables and accessories therefor; train {wording is awkward/imprecise placed in front of description of these goods, should be deleted} foam play mats for use with toys trains; toy buildings and structures; toy animal figures packaged in a backpack; toy vehicles; dolls, dollhouses and accessories therefor; toy robot claws; toy castles; toy fire stations; toy human figurines and accessories therefor; rocking horses; toy dough, dough cutter and accessories therefor; toy dough and accessories therefor for making toy {suggested for clarity} pizza, sushi, desserts, ice cream, cookies, cakes, burgers, and other toy {suggested for clarity} food; toy dough and accessories therefor for creating hairstyles on figurines; toy stamps and their accessories therefor; children's {must state ‘multiple’ – or provide information about the toy component of the table so classification is proper in Class 28} activity tables; toy magnetic numbers, signs, letters and pieces; toy magnetic letters packaged in a tote bag; educational toys in the nature of alphabet and number mats {these appear to be proper in Class 27 and are already in the application}; construction toys and building blocks and their activity tables; natural wooden toys, namely, toy vehicles, toy garages; abaci {proper in Class 9}{though ‘toy abacuses’ are acceptable in Class 28}; toy pounding benches; shape sorters being children’s toys for developing cognitive skills {suggested for clarity}; giant toy cubes; bead mazes being manipulative toy games and puzzles {suggested for clarity}; toy alphabet blocks being manipulative blocks for displaying words {suggested for clarity}; toy wooden building blocks and building blocks {suggested for clarity}; toy building blocks sold together as a unit with a toy wagon {suggested for clarity}; marble runs; toy wooden toolboxes; wooden multiple activity toy centers for {‘center’ is ambiguous, must describe the primary purpose or theme of the toy}; toy animals and figurines; toy prams; dollhouses and accessories therefor; toy {suggested for clarity} wooden castles and accessories therefor; toy trains and accessories therefor. wooden train tables and accessories therefor; toy wooden whistles; outdoor toys and sporting goods and equipment, namely, bouncy horses; sensory balls; educational toys for teaching alphabets, colors, shapes, counting, numbers, words and sentences; children's music activity table; push toys in the form of activity walkers; cardboard game that teaches children how to tie their shoelaces; games, namely, animal snap card games; jigsaw puzzles; puzzles; drawing toys in the nature of {suggested for clarity} tracing paper games; remote controlled toy animals, reptiles and insects; remote controlled toy trains; toy musical instruments, namely, xylophones, pianos, guitars, bells, drums, recorders, cymbals, maracas, rainmakers, tambourines, triangles”

 

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.

 

Multi-Class Application – Advisory / Fees

 

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 potentially in at least four classes; however, applicant submitted a fee sufficient for only three classes.  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.

 

Fees

 

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.

 

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.  

 

U.S. Counsel Rules Changes Advisory

 

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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(s) and/or requirement(s) 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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 124

571-272-8844

jordan.baker@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 09, 2019 for

U.S. Trademark Application Serial No. 88437529

 

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. 

 

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 124

571-272-8844

jordan.baker@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 09, 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.”