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:  December 31, 2019

 

 

INTRODUCTION

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.

 

SUMMARY OF ISSUES:

• Identification Of Goods And Services Amendment Required
• Clarification Of The Number Of Classes For Which Registration Is Sought Required
• Multiple-Class Application Requirements
• Name Of Individual Inquiry

 

 

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).

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES AMENDMENT REQUIRED

 

The identification of goods is indefinite and must be clarified as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, the wording in the identification of goods for International Class 29 must be clarified because it is too broad and could include goods in other international classes as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “Pudding” may include potato pudding in Class 29 and dessert pudding in Class 30.

 

Also, applicant has classified goods in the identification incorrectly.  Applicant must amend the application to classify the goods in the appropriate International Classes as indicated in bold below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). For example, Candy and Bakery goods are both classified in Class 30 not Class 29.

 

Therefore, the applicant may adopt the following identification of goods and/or services, if accurate:

 

 

Class 029:

 

Milk; Milk beverages with high milk content; Yogurt; Frozen yogurt; Drinks based on yogurt; Chocolate milk; Cream; Whey-based food beverages; Soy-based food beverages used as a milk substitute made of soy; Dairy-based food beverages; Vegetable-based food beverages; Fruit-based organic food bars, also containing fruits, dried fruits, fruit juice, grain, vegetables, nuts, seeds, chocolate; Strained Cheese; Frozen vegetables; Dairy products (excluding ice cream, ice milk and frozen yogurt) Dairy products in the nature of { applicant must specify the type of dairy products in Class 29 e.g. cream}; Whipping cream and yogurt; Processed fruits; Canned fruits; Bottled fruits; Dried fruits; Fruit preserves and conserves; Fruit chips; Pressed  Fruit paste; Fruit salads; Fruit sauces; Fruit-based snack food; Fruit-based filings for cakes and pies; Fruit-based spreads; Raisins; Jams; Jellies; Marmalade; Processed vegetables; Vegetable chips; Potato chips; French fried potatoes; Guacamole; Instant potatoes; Onion rings; Potato crisps; Tomato paste; Tomato puree; Edible oils; Peanut butter; Nut butter; Butter; Butter substitutes; Nut-based spread also containing chocolate; Candied fruit and candied fruit snacks and candied nuts; Processed nuts; Soups; Soup broth; Soup mixes; Ham and slices deli meats; Hamburger meat; Hot dogs; Luncheon meats; Meat; Meat substitutes; Cream cheese; Cheese; Cheese spreads; Cheese substitutes; Cheese and cracker combinations; Packaged combination of meat, cheese and crackers   Food package combinations consisting primarily of cheese, meat and/or processed fruit also containing crackers ; Packaged combinations composed primarily of meat and cheese with crackers and desserts Food package combinations consisting primarily of cheese, meat and/or processed fruit also containing baked goods; Candy; Bakery goods; Potato Pudding; Organic dried fruit snacks; Snack food dips; Packaged meal combinations consisting primarily of meat, French fries, processed fruit and processed vegetables; Fruit-based organic food snacks also containing grain, vegetables, nuts, seeds, chocolate; Organic dehydrated fruit snacks; Prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal; Snack mix consisting primarily of dehydrated fruits, processed nuts and also including sesame sticks; Refrigerated food package combinations consisting primarily of meat, cheese and processed vegetables and processed fruits for purposes of creating a sandwich

 

Class 30:         Fruit sauces; Candy; Bakery goods; Dessert Pudding

 

Class 32:         Whey-based food beverages

 

 

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods/services.  The amended identification should only include the specific goods/services indicated, as inserted by applicant, it should not include the braces or instructional language.  Applicant need not amend its identification other than where specified by bold font. 

 

 

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).

 

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.

 

 

 

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The applicant has identified goods and/or services that could be classified in at least 3 classes.  However, the applicant submitted a fee sufficient for only 1 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.

 

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods and/or services 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(es).  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).

 

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.

 

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.

 

 

 

NAME OF INDIVIDUAL INQUIRY

 

Applicant must clarify whether the name in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)        The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “<specify assumed name> identifies <specify actual name>, a living individual whose consent is of record.”

 

(2)        A written consent, personally signed by the named individual(s), as follows:  “I, <specify name>, consent to the use and registration of my name, <name>, as a trademark and/or service mark with the USPTO.” or “I, <specify name>, (parent/legal guardian) of <specify name of minor>, consent to the use and registration of the name, <specify name of minor>, as a trademark and/or service mark with the USPTO.”

 

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

 

 

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. 

 

 

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.

 

 

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.    

 

 

/Karen S. Derby/

Examining Attorney

U.S. Patent and Trademark Office

Law Office 123

Karen.Derby@uspto.gov

571.270.7070

 

 

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 December 31, 2019 for

U.S. Trademark Application Serial No. 88694921

 

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. 

 

 

/Karen S. Derby/

Examining Attorney

U.S. Patent and Trademark Office

Law Office 123

Karen.Derby@uspto.gov

571.270.7070

 

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 31, 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.”