United States Patent and Trademark Office (USPTO)

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

 

 

CORRECTED NON-FINAL 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 31, 2019

 

 

No conflicting marks found.  The USPTO database of registered and pending marks have been searched and no conflicting registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (October 2018). 

PROCEDURAL REQUIREMENT

AMEND & POSSIBLY RECLASSIFY LISTED SERVICES/GOODS

The following entries are acceptable as submitted:

Providing information about commercial business and commercial information via the global computer network;

retail store services featuring gifts, general consumer merchandise, apparel, apparel accessories, furniture, home accessories;

arranging and conducting special events for commercial, promotional or advertising purposes.

Applicant is advised that certain of the listed services and, as listed, goods, are unacceptable as indefinite, overly broad, with use of apparent incorrect punctuation.  37 C.F.R. § 2.32(a)(6); TMEP §§ 1401.03, 1402.11. 

As stated in section 1402.01(a) of the Trademark Manual of Examining Procedure, TMEP § 1402.01(a):

Semicolons should generally be used to separate distinct categories of goods or services within a single class.  For example, ‘cleaners, namely, glass cleaners, oven cleaners, and carpet cleaners; deodorants for pets’ is an acceptable identification in Class 3.  In this example, the word ‘cleaners’ names the category covering ‘glass cleaners, oven cleaners, and carpet cleaners.’  The semicolon prior to ‘deodorants for pets’ indicates that the deodorants are a separate category of goods from the cleaners.  

Therefore, with respect to the identified “retail store services featuring gifts, general consumer merchandise, apparel, apparel accessories, furniture, home accessories; kitchenware; cookware; diningware; food and drink products; printed publications; toys, sporting goods, beauty products, cosmetics, skincare and fragrances,” Applicant must correct the punctuation, so that commas are used instead of semicolons to separate the featured goods of the retail store services, to ensure proper understanding and classification.  TMEP § 1402.01(a).  Alternatively, if Applicant is seeking to register the mark in connection with specific goods, Applicant must properly amend the goods to be definite and reclassify the goods accordingly.  For example, Applicant would amend “kitchenware” to list specific goods by common commercial names, such as “pots and pans” and reclassify these goods to International Class 21.  In addition, Applicant should amend the spelling of “diningware” to the properly worded “dinnerware.”

As the above examples demonstrate, the listings are overly broad.  Depending on the amended listing or listings, the amended goods and services may be in more than the listed international class.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing class, Applicant must amend the application by classifying the goods and services in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit services to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of services are suggestions only.  New wording is capitalized and bold.  Reclassified and relocated wording is in bold lettering. 

Applicant may adopt the following framework to amend and classify the services, if appropriate:

International Class 21 (NOT AN ACTIVE “PAID-FOR” CLASS):

Cookware, NAMELY, POTS AND PANS;

International Class 35:

Providing information about commercial business and commercial information via the global computer network; retail store services featuring gifts, general consumer merchandise, apparel, apparel accessories, furniture, home accessories, kitchenware, cookware, DINNERWARE, food and drink products, printed publications, toys, sporting goods, beauty products, cosmetics, skincare and fragrances; arranging and conducting special events for commercial, promotional or advertising purposes.

TMEP §§ 1402.01, 1402.03.

Please note that while the identification of the above-identified services may be amended to clarify or limit the listed services, adding goods and services or broadening the scope of the listed services is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06-.07.  Therefore, Applicant may not amend any identification to include goods or services that are not within the scope of the goods and services set forth in the present identifications.

For assistance with identifying and classifying the goods and services in this application, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies services that may be classified in more than one international class; however Applicant paid the fee for only one class.  Proper classification determines the amount of total fees; a fee for each class is required.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes. 

REQUIREMENTS SHOULD AN ADDITIONAL CLASS BE ADDED

For an application with more than one international class, an applicant must comply with both of the following requirements based on an intention to use the mark in commerce under Section 1(b) of the Trademark Act:

(1)        Applicant must list the services by their international class in consecutive numerical order, starting with the lowest numbered class; and

 

 (2)       Applicant must submit a filing fee for each international class of services not covered by the fee already paid (fee information can be viewed at the USPTO’s current fee schedule). 

 

37 C.F.R. § 2.86; see 37 C.F.R. §§ 2.32(a), 2.34(a)(3); TMEP §§ 810.01, 1403.01, 1403.02(c).

Please 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.

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.  

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

How to respond:  Click to file a response to this non-final Office action.

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@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 respond timely.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an 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 an 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.

 

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.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 31, 2019 for

U.S. Trademark Application Serial No. 88486735

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@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 31, 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.”