To: | Kafene, Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88570993 - KAFENE - 134605.4000 |
Sent: | November 12, 2019 02:16:54 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88570993
Mark: KAFENE
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Correspondence Address:
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Applicant: Kafene, Inc.
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Reference/Docket No. 134605.4000
Correspondence Email Address: |
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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: November 12, 2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES
Applicant’s applied-for mark identifies the following goods and services:
Class 9: “Downloadable mobile applications for lease-purchase financing or loans of general merchandise; downloadable mobile applications for rent-to-own financing or loans of general merchandise; downloadable mobile applications for use in leasing, financing, and purchasing general merchandise; downloadable mobile applications for use in customizing and adjusting leasing, financing, and purchasing options for general merchandise”
Class 35: “Retail store services featuring general merchandise; online retail store services featuring general merchandise; retail store services in the field of general merchandise that can be purchased under a rent-to-own contract; online retail store services in the field of general merchandise that can be purchased under a rent-to-own contract; retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories; online retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories”
Class 36: “Lease-purchase financing; rent-to-own financing; lease-purchase financing or loans for general merchandise; rent-to-own financing or loans for general merchandise”
Class 43: “Rental of general merchandise; rental of furniture; rental of home decor and accessories; rental of tableware; rental of dinnerware; rental of lighting apparatus for personal use; rental of fixtures; rental of appliances; rental of electronic devices; rental of outdoor home furnishings and accessories”
Applicant must clarify the wording “Rental of general merchandise”; “rental of fixtures”; and “rental of appliances” in the identification of services in International Class 43 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the specific items being rented is not specified. Further, this wording could identify services in more than one international class. For example, “rental of equipment for playing laser tag games” are in International Class 41 and “rental of dishwashers for household purposes” are in International Class 37. Applicant may substitute the following wording, if accurate: “rental of office furniture”; “rental of fixtures, namely, cooking stoves”; and “rental of small kitchen appliances.”
If accurate, applicant may adopt the following identification and associated classifications, which accounts for all the necessary revisions as discussed above:
Class 9: {no changes}
Class 35: “Retail store services featuring a wide variety of consumer goods of others; online retail store services featuring a wide variety of consumer goods of others; retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract; online retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract; retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories; online retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories”
Class 36: “Lease-purchase financing; rent-to-own financing; providing temporary loans for the purchase of general merchandise”
Class 37: “Rental of dishwashers for household purposes”
Class 41: “Rental of equipment for playing laser tag games; rental of electronic devices for watching DVD movies”
Class 42: “Rental of electronic sports training simulators”
Class 43: “Rental of office furniture; rental of furniture; rental of home decor and accessories; rental of tableware; rental of dinnerware; rental of lighting apparatus for personal use; rental of fixtures, namely, cooking stoves; rental of small kitchen appliances; rental of electronic devices for personal home use; rental of outdoor home furnishings and accessories”
If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to include associated International Classes. Applicant may also choose to add some but not all Classifications, or limit the goods and services as specified to include only the goods and services in the current Classifications. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
Applicant’s goods and services 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 services or add goods and 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 and services 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 and services will further limit scope, and once goods and 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.
Applicant should note the additional requirements pertaining to multiple-class applicants, as set forth below.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least seven (7) classes; however, applicant submitted a fee sufficient for only four (4) classes. 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).
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.
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.
Applicant should note the advisory below
ADVISORY – PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
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
/Douglas A. Mondell/
Douglas A. Mondell, Esq.
Law Office 127
(571) 272-0120
douglas.mondell@uspto.gov
RESPONSE GUIDANCE