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:  September 03, 2019

 

 

INTRODUCTION

 

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 RESULTS

 

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).

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

SUMMARY OF ISSUES:

·        Amendment of Identification of Goods Required

·        Significance Inquiry

·        Advisory:  Application is Duplicate of Registration

·        U.S.-Licensed Attorney Bar Information and Attestation Required

 

 

AMENDMENT OF IDENTIFICATION OF GOODS REQUIRED

 

The identification of goods is unacceptable because it contains indefinite wording and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the types of starch particles, fillers.  In addition, Applicant must clarify the nature of its lignin and organic acids. 

 

Applicant should note that descriptions of goods found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14.  The USPTO’s rules and policies with respect to identifications of goods are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Applicant may adopt the following identification, if accurate: 

 

International Class 001:  “Unprocessed, natural and synthetic cellulose, lignocellulose; [specify type of starch particles within this International Class, e.g., plant] starch particles for use in the manufacture of a wide variety of goods; unprocessed cellulosic and lignocellulosic pulp and fibers for use in manufacture of a wide variety of goods; chemicals and chemical additives for use in manufacture of a wide variety of goods; ethanol not used as a fuel; butanol; n-butanol; alcohol for industrial purposes, namely, as an intermediate and precursor for a wide range of composites, compositions, products, co-products, and by-products; raw material in the nature of texturized cellulosic or and lignocellulosic fibrous material, or compositions, and or composites thereof, namely, fibrous [specify type of filler within this International Class, e.g., paste, fwood flour for use as, plastic] fillers for use in the further manufacture of agricultural products; natural or synthetic texturized cellulosic or lignocellulosic fibers used alone or combined with a solid or liquid carrier for use in the manufacture of pollution control products, namely, absorbent materials used to absorb oil and/or for clean-up of environmental pollution; texturized cellulosic and lignocellulosic fibers used alone or combined with a solid or liquid carrier for use as excipients in the manufacture of pharmaceutical preparations and dietary supplements; fertilizer; food preservation composites and compositions, namely, charged materials packaged with foods for the preservation of food; [specify nature of lignin within this International Class, e.g., unprocessed polymers, unprocessed polymer resins, polymer base compositions], namely, lignin derived from lignocellulosic materials and used in the manufacture of a wide variety of goods;. organic and inorganic acids for industrial purposes, namely, hyaluronic acid, monocarboxylic acids, polycarboxylic acids, formic acid, acetic acid, propionic acid, butyric acid, valeric acid, caproic acid, palmitic acid, stearic acid, oxalic acid, malonic acid, succinic acid, glutaric acid, oleic acid, linoleic acid, glycolic acid, lactic acid, hydroxybutyric acid, and mixtures of the foregoing acids; chemical bases for use in the biochemical and chemical industries, namely, analytical chemistry, biotechnology, petroleum technology, and bioprocessing; chemical buffers for use in analytical chemistry, biotechnology, petroleum technology, and bioprocessing; chemicals for use in manufacture of batteries; fly ash obtained from processing biomass used for general manufacturing; polymer base composites and compositions used in manufacture a wide variety of goods; elastomer base composites and compositions  used in the manufacture of a wide variety of goods; unprocessed, natural and synthetic cellulose and lignocellulose, cellulose and lignocellulose pulp and fibers, for use in the manufacture of food products and animal feed additives; raw texturized cellulosic and lignocellulosic fibrous material for use in the manufacture of excipients and dietary supplements, namely, fiber supplements”

 

International Class 030:  “Food additives for non-nutritional purposes for use as a flavoring, namely, processed and semi-processed natural and synthetic cellulose and lignocellulose, cellulose and lignocellulose pulp and fibers, and sugar and food starch particles; sugars” [no change required]

 

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.

 

 

SIGNIFICANCE INQUIRY

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “XEUS” has any significance in the chemicals and fuels trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

ADVISORY:  APPLICATION IS DUPLICATE OF REGISTRATION

 

This application appears to be an exact duplicate of U.S. Registration No. 4339048.  37 C.F.R. §2.48; TMEP §703.  See the attached registration.  The USPTO will not issue duplicate registrations.  37 C.F.R. §2.48; TMEP §703.

 

If after the amendment of the identification of goods, the application is still an exact duplicate, the application will be refused. 

 

Applicant may also respond to this refusal by abandoning the application or surrendering the registration.  To expressly abandon the application, an applicant should use the TEAS Request for Express Abandonment (Withdrawal) of Application form; to surrender the registration, the TEAS Surrender of registration for cancellation form should be used.

 

 

U.S.-LICENSED ATTORNEY BAR INFORMATION AND ATTESTATION 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. 

 

 

If the applicant has any questions or requires assistance in responding to this Office Action, please contact the examining attorney at the contact information provided below.  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. 

 

 

 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@uspto.gov

 

 

 

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  

 

 

 

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 September 03, 2019 for

U.S. Trademark Application Serial No. 88466747

 

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. 

 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@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 September 03, 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.”