United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

NON-FINAL 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:  December 26, 2019

 

NO CONFLICTING MARKS FOUND

The USPTO database of registered and pending marks have been searched and no conflicting registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (October 2018). 

PROCEDURAL REQUIREMENT

AMEND CERTAIN LISTED GOODS

The listed entries in International Class 8 are acceptable as submitted.

Applicant is advised that certain identified goods are unacceptable as indefinite, vague, overly broad, or are identified using live third-party registered marks.  TMEP §§ 1401.02(a), 1402.01, 1402.03(a); see 37 C.F.R. § 2.32(a)(6). 

With respect to “Whiskey Stones” listed in International Class 21, this term is a registered mark not owned by Applicant.  See Registration No. 4490200 (attached hereto).  With respect to “balance balls in the nature of air filled exercise balls” listed in International Class 28, “balance ball” is also a registered mark not owned by Applicant.  See Registration No. 2532828 (attached hereto).  An applicant may not use a registered mark owned by another party in the identification, but instead, must identify the goods by generic name.  A registered mark indicates source and cannot be used to name goods or services in a generic manner.  See TMEP § 1402.09; cf. Camloc Fastener Corp. v. Grant, 119 U.S.P.Q. 264, 264 n.1 (TTAB 1958).  Therefore, Applicant must amend “Whiskey Stones” to delete and may list the goods, if accurate, as “soapstone cubes for chilling whiskey,” and must amend “balance balls in the nature of air filled exercise balls” and may list the goods, if accurate, as “air filled exercise balls used for improving balance.”  See attached listings from the Trademark Manual of Acceptable Identifications of Goods and Services.

With respect to the identified “tumblers,” Applicant must amend to clarify the nature of the goods.  While tumblers that are drinking glasses are in International Class 21, tumblers for marinating food are in International Class 7.    

As the above examples demonstrate, at least one subject listing in this application are also overly broad.  Depending on the amended listing or listings, the amended goods may be in addition classes than the classes currently designated.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing classes, Applicant must amend the application by classifying the goods in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit goods to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of goods are suggestions only.  New wording is capitalized and bold.  Reclassified and relocated wording is in bold lettering. 

Applicant may adopt the following framework to amend and classify the goods, if appropriate:

International Class 21:

Bottle openers; Flasks; Mugs; Beer mugs; Cocktail glasses; SOAPSTONE CUBES FOR CHILLING WHISKEY; Reusable ice cubes or tablets of stainless steel that are frozen and then used to chill freezing and then chilling beverages; Ice cube molds; Pitchers; Beverageware; Cocktail shakers; Cocktail stirrers; Decanters; Wine glasses; Tumblers BEING DRINKING GLASSES; Shot glasses; Serving trays; Serving tongs; Canteens; Coasters not of paper and not being table linen; Shoe brushes; Shoe shine cloths; Shoe polish applicators not containing shoe polish; Shoe polishing mitts.

International Class 28:

Fitness equipment, namely, stretch bands used for fitness purposes, exercise weights, jump ropes, air filled exercise balls USED FOR IMPROVING balance, exercise equipment consisting of discs worn on feet for gliding across smooth surfaces, agility ladders, push up stands, exercise machines comprising a rolling wheel for exercising abdominal muscles, exercise machines in the nature of thigh toning apparatus, and toning balls in the nature of weighted exercise balls; Workout gloves; Weight lifting gloves; Weightlifting belts; Waist trimmer exercise belts.

International Class 7 (NOT AN ACTIVE “PAID-FOR” CLASS):

Tumblers FOR MARINATING FOOD.

TMEP §§ 1402.01, 1402.03.

Please note that while the identification of the above-identified goods may be amended to clarify or limit the listed goods, adding goods and services or broadening the scope of the listed goods is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06-.07.  Therefore, Applicant may not amend any identification to include goods or services that are not within the scope of the goods and services set forth in the present identifications.

For assistance with identifying and classifying the goods and services in this application, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP § 1402.04.

ADVISORIES

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies goods that may be classified in more than one international class; however Applicant paid the fee for only one class.  Proper classification determines the amount of total fees; a fee for each class is required.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes. 

REQUIREMENTS SHOULD AN ADDITIONAL CLASS BE ADDED

For an application with more than one international class, an applicant must comply with both of the following requirements based on an intention to use the mark in commerce under Section 1(b) of the Trademark Act:

(1)        Applicant must list the goods by their international class in consecutive numerical order, starting with the lowest numbered class; and

 

(2)        Applicant must submit a filing fee for each international class of goods not covered by the fee(s) already paid (click for USPTO’s current fee schedule). 

 

37 C.F.R. § 2.86; see 37 C.F.R. §§ 2.32(a), 2.34(a)(3); TMEP §§ 810.01, 1403.01, 1403.02(c).

For an overview of the requirements for a Section 1 and Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.           

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

How to respond:  Click to file a response to this non-final Office action.   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. 

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 respond timely.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an 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 an 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 December 26, 2019 for

U.S. Trademark Application Serial No. 88624845

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 December 26, 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.”