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 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: August 21, 2019
A review of the merits of the
application and a search of the Office’s database of registered and pending marks for potentially conflicting marksare both deferred until
applicant responds to the issues raised in this Office action. TMEP §704.02.
Identification of Goods and Services
The highlighted wording in the identification of goods and services is vague and does not identify the type of products being offered in applicant’s stores. Applicant must
specify the exact nature of the goods and/or services using the common commercial name.
“The purpose of the identification of goods [and/or services] is to provide the general population, including
consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or
services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282,
1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services
using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957);
Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. An in depth knowledge of the relevant field should not be necessary for
understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be
avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322. The applicant must specify the exact
nature of the services using the common commercial name.
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or
services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA,
494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be
specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at
1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
As a general rule, 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).
The following identification of goods and services is suggested, if accurate:
Online retail store services featuring health and wellness related products, namely, [specify exact nature of goods, e.g. clothing, surgical equipment,
pharmaceutical medications, etc.], in Class 035.
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.
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
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.
/Saima Makhdoom/
Law Office 101
U.S. Patent and Trademark Office
Tele: (571) 272-8802
Fax: (571) 273-8802
E-Mail: saima.makhdoom@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.