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 17, 2019

 

 

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  

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 OF OFFICE’S DATABASE OF MARKS – NO CONFLICTING MARKS

 

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).

 

SUMMARY OF ISSUES:

• Color claim and mark description incomplete
• Identification of goods unacceptable
• Applicant must either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney

 

INFORMALITIES

 

Color claim and mark description incomplete

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  white.  In addition, the following colors have been omitted from the description:  white.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors white and gold are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  the wording BODI in Myriad-Pro, with the first 3 letters "BOD" in capital letters, and the 4th letter "i" in lower-case. Each letter appears in a double letter style with the inside of the letter in white and the outside of the letter in gold with gradient fade in horizontal center”.

 

In the alternative, if the white color is background applicant must specify as follows:

 

The mark consists of the following:  the wording BODI with the first 3 letters "BOD" in capital letters, and the 4th letter "i" in lower-case. Each letter appears in a double letter style in gold with gradient fade in horizontal center.  The white represents shading, and is not part of the mark”.

 Identification of goods unacceptable

The identification of goods is indefinite and must be clarified.  Applicant must specify the form of delivery of the “herbal extract supplements”.  E.g. powder, bar, pill, etc..   Applicant must specify the nature of the “herbs and nutrients”.  E.g. “medicinal herbs”, “nutritional supplement in the nature of a nutrient-dense protein-based drink mix”, etc.  Applicant must be specify that the “health enhancement supplements” are nutritional, and specify the purpose of the supplements.  The wording “nutritional food mixtures” is indefinite.  Applicant must specify the nature of the mixtures.  E.g. “nutritional supplement meal replacement bars for boosting energy”.  The wording “freeze dried meal alternatives” is indefinite.  Applicant must specify the exact food products.  E.g. “Freeze dried food adapted for medical purposes”.  The wording “dietary balance program using supplements” is indefinite.  Applicant may amend to “nutritional supplement program design to achieve dietary balance”.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

Applicant may adopt the following identification, if accurate: 

Class 5:  “Herbal extract supplements in powder, bar and pill form; custom blends of herbs and nutrients, namely, {SPECIFY the items.  E.g. medicinal herbs, etc.}; nutritional health enhancement supplements to promote {SPECIFY purpose}; nutritional food mixtures, namely, {SPECIFY the items. E.g. nutritional supplement meal replacement bars for boosting energy} freeze dried meal alternatives, namely, “Freeze dried food adapted for medical purposes”; Nutritional supplement program design to achieve dietary balance”.

U.S. Acceptable Identification of Goods and Services Manual Online

 

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.

 

Scope advisory

 

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).

 

 

Applicant must either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189, 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant an individual of Canada and specifies a U.S. street address as applicant’s domicile.  It is unclear from the record whether the U.S. street address provided is the place applicant resides and intends to be applicant’s principal home.  If the U.S. street address of record is not applicant’s correct domicile address, applicant must provide the applicant’s correct domicile street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.

 

If applicant amends the application to list a domicile address outside of the United States or its territories, or if applicant elects not to provide documentation to support its U.S. street address as explained below, applicant must appoint a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant provides documentation to support its U.S. street address, the requirement to appoint a U.S.-licensed attorney will be withdrawn.  Alternatively, if applicant appoints a U.S.-licensed attorney, the requirement for documentation will be withdrawn.

 

If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; Examination Guide 4-19 (Rev.) at I.A.2. Specifically, applicant must provide documentation showing the name and listed domicile address of the individual, for example one of the following:

 

            (1) a current, valid signed rental, lease, or mortgage agreement; or (2) a current valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated within 60 days of the application filing date./(1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency.

 

Examination Guide 4-19, at I.A.2; see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

Submitted documentation must show the name, listed address, and the date of the document but should redact other personal and financial information. 

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

 

 

 

/Carolyn A. Pendleton/

Examining Attorney

Law Office 103

Phone:  571-272-9207

carolyn.pendleton@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 September 17, 2019 for

U.S. Trademark Application Serial No. 88480223

 

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. 

 

 

/Carolyn A. Pendleton/

Examining Attorney

Law Office 103

Phone:  571-272-9207

carolyn.pendleton@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 17, 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.”