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 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 13, 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.
Search Results
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
The wording “Christmas tree ornaments” in the
identification of goods for International Class 28 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, this wording could encompass “Electric lights for Christmas trees” in Class 11,
“Christmas tree ornaments except confectionery and electric Christmas tree lights” in Class 28, and “confectionery for decorating
Christmas trees” in Class 30.
Applicant may substitute the following wording, if accurate:
Class 11:
Electric lights for Christmas trees
Class 28:
Toys, games and playthings, namely, action figures and
accessories therefor, bathtub toys, kites, toy building blocks, board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity
toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable
toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys, and stuffed toys; Christmas
tree ornaments except confectionery and electric Christmas tree lights; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an
external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief
exercise balls
Class 30:
Confectionery for decorating Christmas trees
Applicant’s goods and/or 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/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 and/or 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/or
services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
Classification
If applicant adopts the suggested amendment of the goods, then applicant must amend the
classification to International Classes 11, 28, and 30. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
Combined 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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
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
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.
/Karen Bracey/
Examining Attorney
Law Office 116
571-272-9132
karen.bracey@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.