Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUPPEMENTAL 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:  August 20, 2019

 

This Office action is intended to supplement the Office action sent out earlier this day, August 20, 2019. That Office action lacked a “Multiple Class Advisory” and omitted the Identification requirement from the summary of issues. The Multiple Class Advisory is set forth below. Applicant must address each issue set out in the earlier action, namely:

• Section 2(d) Likelihood of Confusion
• Particular Wording in the Identification of Goods is Broad and Indefinite—Maintained and Continued
• Disclaimer Required
• Additional Attorney Information Required

 

These issues are set forth below, for reference. However, all attachments and arguments provided in the previous Office action are incorporated by reference.

 

Additionally, applicant must address the Multiple Class Advisory set forth below. 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

• Section 2(d) Refusal—Maintained and Continued
• Particular Wording in the Identification of Goods is Broad and Indefinite—Maintained and Continued
• Multiple Class Advisory
• Disclaimer Required—Maintained and Continued
• Additional Attorney Information Required—Maintained and Continued

Section 2(d) Likelihood of Confusion Refusal—Partial Refusal

This Refusal applies to all of applicant’s goods except for “printers’ type, printing blocks”

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4355903.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

Applicant’s Mark is:

• ASAHI WRAP for:
• • Class 16: Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; Non-woven plastic sheet for cooking; Pens (office requisites); Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites, except furniture; Adhesives for stationery or household purposes; Drawing materials and materials for artists; Paint brushes; Instructional and teaching materials; Plastic sheets, films and bags for wrapping and packaging;

Registrant’s Mark is:

• ASAHI for:
• • Class 16: Paper and cardboard, industrial packaging containers of paper, food wrapping plastic film for household use, garbage bags of paper for household use, garbage bags of plastics for household use, hygienic hand towels of paper, paper patterns, table cloths of paper, table napkins of paper, towels of paper, hand towels of paper, banners of paper, flags of paper, handkerchiefs of paper, babies diapers of paper, printed matter, painting and calligraphic works, photographs, photograph stands; stationery and study materials, namely, study guide, ball-point pens, mechanical pencils, fountain pens, book covers, note books, memo pads, post cards; pastes and other adhesives for stationery or household purpose
  • Class 20: Furniture, mirrors, namely, looking glasses, cushions, Japanese floor cushions (Zabuton); industrial packaging containers of wood; industrial packaging containers of bamboo; pillows, mattresses, hand-held flat fans, blinds of reed, rattan or bamboo (Sudare), drinking straws, hand-held folding fans, benches, upright signboards of wood or plastics, advertising balloons, shopping baskets, indoor paper blinds, cradles, infant walkers, picture frames
  • Class 21: Non-electric cooking pots and pans; non-electric coffee-pots, non-electric Japanese cast iron kettles (Tetsubin), non-electric kettles; tableware not of precious metal, namely, tea services, coffee services, serving spoons, serving fork, serving bowls, dishes, beer mugs not of precious metal, drinking glasses not of precious metal, drinking cups not of precious metal, mugs not of precious metal, decanters not of precious metal; ice pails, non-electric whisks, cooking skewers, non-electric portable coldboxes, cooking strainers, pepper pots, sugar bowls not of precious metal, salt shakers not of precious metal, egg cups not of precious metal, napkin holders not of precious metal, napkin rings not of precious metal, trays for domestic purpose, not of precious metal, toothpick holders not of precious metal, rice chests, colanders, cocktail shaker, Salt and pepper shakers, Japanese style cooked rice scoops (Shamoji), hand-operated coffee grinders and pepper mills, cooking funnels, food preserving jugs of glass, drinking flasks, Japanese style personal dining trays or stands (Zen), bottle openers, cooking graters, tart scoops, baking pan-mats; chopsticks, chopstick cases; ladles for kitchen use; tableware, namely, scoops, cooking sieves and sifters; chopping boards for kitchen use; vacuum bottles, namely, insulated flasks; cooking utensils, namely, grills; toothpicks, citrus juicers, namely, lemon squeezers; non-electric waffle irons; cinder sifters for household purposes; boxes of metal for dispensing paper towels; tailors sprayers, namely, empty spray bottles; piggy banks not of metal, upright signboards of glass or ceramics; perfume burners; portable cooking kits for outdoor use, indoor aquaria and their fittings, namely, ornamental fish tanks, aquariums and aquarium ornaments which are furnished at bars, restaurants and cafes offering food and beverages, artificial aquarium landscapes, aquarium covers, aquarium air stones, aquarium hoods, cosmetic and toilet utensils, namely, combs, comb cases, toilet sponges, toilet brushes, powder puffs, toothbrushes, shaving brushes, shaving brush stands,eyebrow brushes, cosmetic brushes, brushes for cleaning beer mugs, brushes for cleaning tableware, flower pots and flower boxes for plant cultivation
  • Class 25: Clothing, namely, tee-shirts, Japanese traditional kimono for festival (Happi), jumpers, polo shirts, sweat-shirts, aprons, caps, hats; garters; sock suspenders; waistbands; belts for clothing; footwear; masquerade costumes; clothing for sports, namely, t-shirts, shorts, sweatpants; boots for sports

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

Comparison of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks share the identical wording, “ASAHI”. In fact, this is the only word in the registered mark. This contributes to a strong likelihood of consumer confusion.

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

Specifically, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first word in applicant’s mark is “ASAHI”, and “ASAHI” is the only word in the registered mark. As consumers are generally more inclined to focus on the first word in any mark, the marks share identical dominant elements.

Additionally, disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, “WRAP” will need to be disclaimed in applicant’s mark. This is explained in greater detail in the “Disclaimer Required” section below. This bolsters the strength of the shared wording, “ASAHI”.

Additionally, a mark in typed or standard characters, like applicant’s mark, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters, like registrant’s mark, generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

It should also be noted that incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, all of the wording in registrant’s mark is incorporated within applicant’s mark. This does not detract from confusion as the marks are identical in part, and there is no other wording in registrant’s mark to distinguish it from applicant’s mark.

Lastly, where, as here, the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

In light of the foregoing, it is evident that the marks are similar in sound, appearance, meaning and commercial impression. Thus, the marks are likely to be confused.

Comparison of the Goods

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

In this case:

·       Here, registrant’s “food wrapping plastic film for household use” is encompassed by applicant’s “plastic film for packaging of foodstuff”, and encompasses “household plastic casting film for wrapping of foodstuff”. Additionally, applicant’s plastic sheets, films an bags for wrapping and packaging encompasses many of registrant’s goods, including “food wrapping plastic film for household use” and “garbage bags of plastics for household use”, as these are forms of plastic sheets, films, and/or bags for packaging purposes.

·       Additionally, applicant’s “pens” encompasses registrant’s more narrowly identified pen goods, namely, “ball-point pens” and “fountain pens”.

·       Each party provides paper and cardboard.

·       Applicant’s “printed matter” encompasses many of registrant’s more narrowly identified goods, namely, post cards. Additionally, registrant actually identifies “printed matter”.

·       Each party provides photographs, stationery, adhesives for household purposes.

·       Registrant’s “printed matter” encompasses applicant’s “instructional and teaching materials”.

·       Applicant’s “office requisites, except furniture” encompasses many of registrant’s goods, including, memo pads, note books, and mechanical pencils.

·       Applicant’s “Bookbinding material” may encompass registrant’s “pastes and other adhesives for stationery or household purpose” as these goods may be used, at home, for bookbinding.

·       Applicant’s “Drawing materials and materials for artists” encompasses many of registrant’s goods, including mechanical pencils and fountain pens

Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these particular s.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, these particular goods of applicant and registrant are realted.

The remainder of applicant’s goods are closely related to registrant’s goods. The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

The previously attached Internet evidence from the Arteza and Crayola websites shows the same sources that provide paint brushes also provide pens, all under the same source-indicating marks. The previously attached evidence from the Webstaurant store and Amazon websites shows that the same brands provide plastic wrap and storage materials for use in industry, e.g. the restaurant industry, as well as for household use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

In light of the foregoing, applicant’s and registrant’s marks are likely to be confused. Applicant may provide arguments in support of registration, however, applicant must still respond to the requirements set forth below.

Particular Wording in the Identification of Goods is Indefinite and Broad

Applicant must clarify particular wording in the identification of goods in International Class 16 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specific issues are set forth below.

Class 16 Issues:

·       “Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven” in indefinite. Applicant must use the common commercial name for these goods, e.g. “baking paper”

·       “Non-woven plastic sheet for cooking” is indefinite. The trademark examining attorney is unclear on the nature of these goods. It seems that a plastic sheet, when used for cooking, may melt. Applicant must expound upon the nature of the goods and use the common commercial name for the goods. At this time, the trademark examining attorney is unable to propose definite language without being given more information. Thus, it is removed from the suggested identification.  See TMEP §1402.01(e).

·       Pens (office requisites) is indefinite. The parentheses should be removed, and the parenthetical information placed into the body of the entry.

·       “printed matter” is indefinite. If this entry refers to publications, applicant must specify the nature and subject matter of the matter, e.g. fiction books on a variety of topics, newsletters about {specify subject matter}, brochures in the field of {specify subject matter}. If this entry does not refer to publications, applicant must name the particular matter they provide, e.g. printed tickets, printed sewing patterns, printed graphics, printed plans, printed calendars

·       “office requisites, except furniture” is indefinite. Applicant must name the particular types of office requisites they provide, e.g. staplers, paper trimmers, paper embossers, rubber bands, envelop sealing machines, electric paper hole punches

·       “Drawing materials and materials for artists;” is indefinite and broad. Applicant must name the materials they provide, e.g. “drawing pens, drawing ink, drawing rulers, drawing pads, artists’ pens, and artists’ pastels”, all in Class 16, “paint for artists”, “painting sets for artists” in Class 2,  just to name a few definite options.

·       “Instructional and teaching materials” is indefinite. Applicant must clarify the nature and field of the goods, e.g. printed teaching materials in the field of American history

Applicant may substitute the following wording, if accurate: 

Class 2: Materials for artists, namely, {name particular Class 2 goods here, e.g. paints for artists, painting sets for artists}

Class 16: Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; baking paper, namely, paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; office requisites, namely, pens; Paper and cardboard; Printed matter, namely, {specify nature and subject matter of publications, e.g. fiction books on a variety of topics, newsletters about math, brochures in the field of environmental science}; printed matter, namely, {specify nature of printed matter here, e.g. printed tickets, printed sewing patterns, printed graphics, printed plans, printed calendars}; Bookbinding material; Photographs; Stationery and office requisites, except furniture, namely, {name particular requisites here, e.g. staplers, paper trimmers, paper embossers, rubber bands, envelop sealing machines, electric paper hole punches}; Adhesives for stationery or household purposes; Drawing materials and materials for artists, namely, {name particular Class 16 goods here, e.g. drawing pens, drawing ink, drawing rulers, drawing pads, artists’ pens, and artists’ pastels}; Paint brushes; printed instructional and teaching materials in the field of {specify field here}; Plastic sheets, films and bags for wrapping and packaging; Printers' type, printing blocks

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

Multiple Class Advisory

The application identifies goods 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  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.

Disclaimer Required

Applicant must provide a disclaimer of the unregistrable part 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 “WRAP” because it is not inherently distinctive.  This unregistrable term at best is merely descriptive of a feature 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). 

Applicant’s identification states that they provide various forms of wrapping. Thus, “wrap” is immediately descriptive of, if not generic for, a feature of applicant’s goods.

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

No claim is made to the exclusive right to use “WRAP” 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. 

Additional Attorney Information Required

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

Response to 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. 

 

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  

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@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 August 20, 2019 for

U.S. Trademark Application Serial No. 88449402

 

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. 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@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 August 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.”