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 08, 2019

 

 

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:

 

• Definite Identification of Goods Required
• Multiple Class Application Requirements

 

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).

 

DEFINITE IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

The wording “materials” in the entries for “writing, painting and drawing materials” and “materials for artists” in the identification of goods is indefinite and overbroad, and must be clarified because this wording could encompass goods in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this could encompass not only goods in Class 016 like paintbrushes and pencils, but also artists’ paints in Class 002.  Applicant must therefore clarify the type of materials for which it seeks registration, and classify accordingly, complying with the multiple class application requirements in the next section.

 

Applicant must also remove the parentheses from the identification of goods in the following entries:

 

• pens (office requisites)
• pastels (crayons)
• scrapers (erasers) for offices
• cabinets for stationery (office requisites)
• gel pens (office requisites)*
• ball-point pens (office requisites)*
• rollerball pen (stationery)*

 

Applicant must remove the parentheses from the identification.  For those entries indicated with an asterisk (*), applicant may simply delete the wording in parentheses.  For the remaining entries, applicant must incorporate the parenthetical wording or limitation into the description of the goods.  For example, “cabinets for stationery” is indefinite and overbroad without incorporating the limitation regarding the nature of the goods.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 002:          painting materials, namely, paints for use in art; materials for artists, namely, paints

 

International Class 016:          Writing, painting and drawing materials, namely, {specify Class 016 materials, e.g., painting palettes, brushes}; materials for artists, namely, {specify Class 016 materials, e.g., charcoal, pencils, canvas panels}; pens being office requisites; pencils; color pencils; watercolor pens; watercolor pencils; watercolor sticks; aquarelle sticks being pencils; pastels being crayons; fountain pens; fiber-tip pens; pencil sharpeners, electric or non-electric; pencil sharpening machines, electric or non-electric; scrapers being erasers for offices; retractable pencils; desktop cabinets for stationery; compasses for drawing; drawing pads; charcoal pencils; indian inks; pencil lead holders; gel pens (office requisites); ball-point pens (office requisites); rollerball pen (stationery); refills for ball-point pens

 

See TMEP §1402.01, 1402.03.

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods.  The stricken font is wording suggested for deletion.  The braces should not appear in the amended identification; only the specific goods indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified.

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 and as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Any deleted goods may not later 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 that may be classified in at least two classes; however, applicant submitted fees sufficient for only one class.  In a multiple-class application, a fee for each class is required.  Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):

 

(1)        List the goods 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(s) already paid (view the USPTO’s current fee schedule). 

 

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.

 

TEAS RESPONSE GUIDELINES

 

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  

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 08, 2019 for

U.S. Trademark Application Serial No. 88517400

 

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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 08, 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.”