To: | Carl Freudenberg KG (troymailroom@hdp.com) |
Subject: | U.S. Trademark Application Serial No. 88603459 - IT FEELS GREAT TO FEEL AT HOME - 8470TF200286 |
Sent: | September 25, 2019 09:12:59 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88603459
Mark: IT FEELS GREAT TO FEEL AT HOME
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Correspondence Address: |
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Applicant: Carl Freudenberg KG
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Reference/Docket No. 8470TF200286
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: September 25, 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 that applicant must address:
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
AMENDED IDENTIFICATION OF GOODS REQUIRED
Several entries in the identification of goods below are indefinite and must be clarified because they do not state the specific type of good, or purpose of the good provided by the applicant. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, applicant includes many ambiguous terms such as “especially,” “primarily,” “in particular” that must be clarified to ensure the exact nature of the goods offered. Additionally, the use of the wording “and/or” is also considered ambiguous.
The wording “cloths’ in Class 21 must make clear that these are cleaning cloths for household use.
The wording bolded below offers suggestions and clarifications for the problematic wording, which applicant may substitute, if accurate:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations;
Disposable cloths impregnated with a detergent for cleaning; Polishing preparations; Cleaning preparations for household purposes; Household cleaning
preparations; Cleaning preparations for hard surfaces; Cleaning preparations for window glass; cleaning preparations for surfaces of metal, namely, stainless
steel, chrome, bronze and copper; Cleaning preparations for range and stove surfaces; Cleaning preparations for counter surfaces; Cleaning preparations for cabinet surfaces; Cleaning preparations for
heating and cooking implements and utensils, namely, silverware, dishes, pots, and pans; Cleaning preparations for wood; Bathroom cleaning preparations; Cleaning
preparations for stone surfaces, namely, marble surfaces and granite surfaces; Cleaning preparations for tile and grout; All-purpose cleaning preparations; Automotive
cleaning preparations; General purpose cleaning and polishing liquids; Cleaning preparations for carpets; stain removers; Pet stain removers; Mold
stain removing preparations; Detergent soaps;shoe care cleaning preparations, namely, shoe cream, shoe wax;
Scouring solutions, namely, scouring milk, scouring cream, scouring powders, varnish removing preparations, fabric
softeners for laundry use; Cleaning reparations for the care, treatment and beautification of fabrics; All of the aforesaid goods being with or
without a disinfecting and/or deodorising effect or component
Class 7: Machines, namely, electric floor cleaning machines and floor cleaning robots, electric floor cleaning and brushing machines and part therefor; electric window cleaning machines, electric cleaning machines for carpets and carpeted flooring; electric vacuum cleaners, electric window vacuum cleaners;
Class 21: Articles for cleaning purposes, namely, household cleaning cloths, window cleaning cloths made of leather and artificial leather, dusting cloths, cloths for washing dishes, cloths for cleaning surfaces, dusters, scouring pads, multi-purpose cleaning cloths, floor cleaning cloths, microfiber cleaning cloths, sponge cleaning cloths, cleaning cloths made of nonwovens, cleaning cloths made of woven and knitted fabrics, dry disposable cleaning cloths, scouring pads made of nonwoven material with and without sponge section; Cleaning cloths, sponges and sponge cloths made wholly or principally of generated cellulose, for household cleaning purposes and as draining mats; Steel wool for cleaning, namely, steel wool cleaners with and without handles made of foamed plastic, steel wool pads impregnated with soap; Sponges for household purposes, namely, plastic coated scouring sponges, cleaning sponges made of viscose and plastic; Household and kitchen utensils, manually operated, non-electrical cleaning instruments, namely, brooms, washing brushes, dustpans, mops, mop wringers, toilet brushes, holders for toilet brushes,
window-cleaning
devices[MISCLASSIFIED], water
wipers, namely, squeegees for household use, household gloves made of latex and plastic; disposable gloves for household and gardening purposes; gardening gloves and wiping dust gloves; drying devices for laundry, namely, drying racks for
clothes and laundry, rotary clothes dryer racks for clothes and laundry, drying boards for clothes and laundry, clothes-pegs, ironing boards,
ironing sleeve boards, ironing board supports, ironing board covers, iron cleaning cloths; containers for
household use, namely, water buckets, pedal bins, waste bins for household use, sorting laundry baskets of
plastic for laundry; laundry baskets of plastic; Components, not of metal, for hand-operated, non-electrical cleaning instruments included in this
class 21, in particular arms, handles, connecting parts, links, couplings, not of metal, being fitted goods [must first state specific cleaning instruments and then components that are part of
the instrument]
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 or add goods 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 are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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.
ASSISTANCE
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
Alexandra Liebl
/Alexandra Suarez Liebl/
Examining Attorney
Law Office 120
p) (571) 272-4845
e) Alexandra.Suarez@uspto.gov
RESPONSE GUIDANCE