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:  October 01, 2019

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES

 

• Identification of Goods Amendment Required
• Multiple-Class Application Requirements
• Counsel Advisory

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

Applicant has requested registration of the standard character mark “THEODORA” for “Rectangular neodymium fridge magnets; Clear Treat Bags with Twist Ties and Tags, Clear OPP Plastic Cello Bags”, which applicant has classified in Class 21.

 

Applicant has classified “Rectangular neodymium fridge magnets” in International Class 21; however, the proper classification is International Class 9.  Therefore, applicant may respond by (1) adding International Class 9 to the application and reclassifying these goods in the proper international class, (2) deleting “Rectangular neodymium fridge magnets” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording "Clear Treat Bags with Twist Ties and Tags, Clear OPP Plastic Cello Bags" in the identification of goods is indefinite and must be clarified because the wording does not specify the nature of the goods with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

This wording must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, “clear treat bags” and “Clear OPP plastic cello bags” in addition to failing to adequately describe the goods, potentially describe goods in Classes 16 and/or 22. The identification of “twist ties” could identify goods in Class 16. Finally, “Tags”, while also indefinite to describe the goods, could be classified numerous classes.

 

Applicant may substitute the following wording, if accurate (suggested amendments featured in bold, underline, and strikethrough). Please note that if applicant wishes to adopt the suggested deletions, featured in strikethrough below, applicant MUST MANUALLY DELETE the struck through matter within electronic USPTO response forms. Copying and pasting the below language will NOT result in the deletion of the language from the identification.

 

Class 9: Rectangular neodymium fridge magnets

 

Class 16: Food storage and packaging kits comprised of clear plastic food storage and packaging bags, plastic twist ties, and ____________ {identify particular type of tag in Class 16, e.g., paper, cardboard, sticker, etc.} tags

 

Class 21: Rectangular neodymium fridge magnets; Clear Treat Bags with Twist Ties and Tags, Clear OPP Plastic Cello Bags

 

Class 22: Clear polypropylene bags for storage of _________ {indicate items stored within bags, e.g., clothing, household decorations, personal belongings to prevent lice infestation, etc.}

 

SCOPE ADVISORY

 

Applicant’s goods 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 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 will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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 APPLICATION REQUIREMENTS

 

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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only one (1) class(es).  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).

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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.

 

COUNSEL ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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  

 

 

Kathleen Schwarz

Kathleen H. Schwarz

/Kathleen H. Schwarz/

Examining Attorney

Law Office 123

571-272-2460

kathleen.schwarz@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 October 01, 2019 for

U.S. Trademark Application Serial No. 88512364

 

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. 

 

 

Kathleen Schwarz

Kathleen H. Schwarz

/Kathleen H. Schwarz/

Examining Attorney

Law Office 123

571-272-2460

kathleen.schwarz@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 October 01, 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.”