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:  November 20, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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).

 

SUMMARY OF ISSUES:

• PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION
• CLASSIFICATION AND IDENTIFICATION OF GOODS
• ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
• DISCLAIMER REQUIRED

 

PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION

 

Particular wording in the U.S. application’s identification of goods has been found to exceed the scope of goods in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods that are within the scope of the goods in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods as follows:  “bath linens; household linens.” 

 

However, the foreign registration identifies the following goods:  “Home fashions, namely: bath mats; bath accessories, namely bathtub mats, shower curtain rings, shower curtain liners, bathroom wall mirrors, bathroom cosmetic mirrors, soap boxes, soap dispensers, soap dishes, towel racks, towel trays, towel stand, toilet brush, toilet brush holder, tooth brush holder, robe hooks, shower caddies, toilet tissue dispenser, tissue boxes, trays, tumblers, clothing hampers, laundry bags, bottles sold empty namely, bottles with pumps, bottles with misters, bottles with triggers, bottles with caps, trash cans, travel cases; beach accessories, namely beach towels, beach chairs, beach bags, beach umbrellas, beach tent, picnic hamper, picnic cooler; bedding, carpets, canisters, cooking utensils, cookware, clocks; closet accessories; cutlery, dinnerware, draperies, flatware; garden accessories, namely flower pots, plant pots, watering cans, garden seats, planter boxes; glassware, namely beverage glassware, namely, drinking glasses, wine glasses, high ball glasses, old fashion glasses, liqueur glasses, martini glasses, iced tea glasses, tumblers, wine decanters, mixing glasses, wine carafes, champagne glasses, champagne flutes, ice buckets, vases, food and liquid serving containers; furniture, namely tables, chairs, folding chairs, stools, shelving units, desks, desk chairs, dressers, cabinets, ottomans, foot benches, benches, side tables, nesting tables, mirrors, sofas, loveseats, coffee tables, console tables, bookcases, armoires, entertainment consoles, bed frames, bed headboards, mattresses; kitchen accessories, namely wine coolers, bottle openers, coasters, salt and pepper shakers, spice cans, measuring cups, cotton napkins, napkin rings, placemats, trivets, cutting boards, tongs, ice tongs, graters, corkscrews, salad hands, salad servers, paper towel holders, cookie sheets, tea press, non electric tea kettles, utensils for serving, baking and cooking food; lamps, lighting, namely ceiling fixtures, wall fixtures/sconces; mirrors; outdoor accessories, namely acrylic dishes, acrylic barware, acrylic drinking glasses, anti-mosquito candles and holders, bar cart, bar stand, bar stools, barbeque stand side table, barbeque utensils, barbeque mitts, barbeque condiment tray, cushions, outdoor foot mats, hammocks, outdoor fire pit, outdoor cooler/vacuum bottles, pool towels, pool cushions, pool slippers, serving cart, pool serving bench, tea light holders, outdoor showers, gazebos, placemats, umbrella, umbrella stand, tables, chairs, lounge chairs; outdoor furniture, outdoor vessels, namely, candle holders, plant holders, flower holders, outdoor vases, outdoor gathering baskets, water bowls, water pitchers, urns; pet accessories, namely dog beds, cat beds, pet mats, food bowls, pet collars, pet toys; photo frames, pillows; serve ware, namely plates for serving food, bowls for serving food, metal utensils for serving food, wooden utensils for serving food, plastic utensils for serving food; shower curtains, stemware; storage containers, namely wicker baskets, ottoman cube with lid, storage benches; table linens, throws, towels, vases, blankets, duvets, place mats, oven mitts, pot holders, aprons; woodenware namely utensils for serving food, bowls, plates, salt and pepper shakers, pepper mills, salt mills, vases, trays.”

 

These goods in the U.S. application exceed the scope of goods in the foreign registration because the entries for “bath linens” and “household linens” are broader than the specific items listed in the identification of the foreign registration.  Thus, these goods in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)             Amending the identification of goods in the U.S. application for the Section 44(e) filing basis to correspond with the goods identified in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)             Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS

 

Particular wording in the identification of goods is indefinite/too broad or misclassified and must be clarified for reasons explained below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please see specific requirements explained below in italicized lettering and suggested wording below in bold lettering.  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 following substitute wording is suggested, if accurate:

 

Class 009: fire-extinguishing blankets

 

Class 010: blankets for medical purposes; Therapeutic weighted blankets

 

Class 018: horse blankets

 

Class 024: Towels; beach towels; pool towels; face cloths; shower curtains; shower curtain liners; bedding, namely, pillow cases, bed blankets, bed canopies, bed clothes, bed covers, mattress covers, bed linen, bed pads, mattress pads, bed sheets, bed skirts, bed spreads, shams, comforters, quilts, duvets, duvet covers; throws; {This entry is indefinite and over broad, applicant must specify the nature of the blankets, e.g.} bed blankets; draperies; window curtains; bathroom window curtains; bath linens; household linens; table linens

 

Class 028: yoga blankets

 

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 or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

ADVISORY: 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 Sections 1(b) and 44:

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 5 classes; however, applicant submitted a fee 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “HOME” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary entries show this wording means “of, relating to, or being a place of residence, place of origin, or base of operations”.  Thus, the wording merely describes applicant’s goods because the applicant’s identified goods are homewares which are goods used in the home.

 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “HOME” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE GUIDELINES

 

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.  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  

 

 

/John Salcido/

John Salcido

Examining Attorney

Law Office 122

571-272-7549

John.Salcido@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 November 20, 2019 for

U.S. Trademark Application Serial No. 88585673

 

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. 

 

 

/John Salcido/

John Salcido

Examining Attorney

Law Office 122

571-272-7549

John.Salcido@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 November 20, 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.”