Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 27, 2020

 

 This Office Action responds to applicant’s communication dated 8/27/2020.

 

The trademark examining attorney notes that the following requirement(s) have been satisfied:

 

Amendment to the identification of goods for class 003.

 

The SECTION 2(d) REFUSAL of record is withdrawn.

 

However, the requirement for AN AMENDED IDENTIFICATION, for class 005 only, is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

IDENTIFICATION OF GOODS/SERVICES

 

GENERAL GUIDELINES

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

REGULAR

Applicant may amend the identification to list only those items that are within the scope of the goods/services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

UNACCEPTABLE IDENTIFICATION

 

PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description. 

 

Class (no class specified)

 

Applicant filed the following identification:

 

Water-soluble and dissolvable powder mix for food and beverages; Water-soluble and dissolvable liquid mix for food and beverages; Dietary supplements in the form of pills, capsules, tablets, gummies, edible oils, tinctures, mints, candies, breath strips, and orally disintegrating tablets; Body and hand lotions and creams, soap, shampoo; transdermal patches; Formulation and manufacturer of dietary supplements and powder mix to the specification of others”

 

In response to the examining attorney’s requirement for an amended identification, applicant submitted the following in class 005:

 

Water-soluble and dissolvable sweetening powder mix for food and beverages; Water-soluble and dissolvable liquid sweetening mix for food and beverages; Dietary supplements in the form of pills, capsules, tablets, gummies, edible oils, tinctures, mints, candies, breath strips, and orally disintegrating tablets; Transdermal patches for use in the treatment of pain, rashes, and skin ailments; medicated body and hand lotions, creams, soap, and shampoo;

 

Some of the wording in the AMENDED identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear.  See TMEP §§1402.01, 1402.03.

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“Water-soluble and dissolvable sweetening powder mix for food and beverages; Water-soluble and dissolvable liquid sweetening mix for food and beverages; Dietary supplements in the form of pills, capsules, tablets, gummies, edible oils, tinctures, mints, candies, breath strips, and orally disintegrating tablets; Transdermal patches for use in the treatment of pain, rashes, and skin ailments; medicated body and hand lotions, creams, soap, and shampoo” in class 005

 

"Water-soluble and dissolvable artificial sweetening powder mix for food and beverages; Water-soluble and dissolvable artificial liquid sweetening mix for food and beverages" in class 001

 

"Water-soluble and dissolvable natural sweetening powder mix for food and beverages; Water-soluble and dissolvable natural liquid sweetening mix for food and beverages" in class 030

 

 

Note:

 

Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names within this class.

Artificial sweeteners are in class 001 and natural sweeteners are in class 030.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – ITU

 

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 4 classes; however, applicant submitted a fee(s) sufficient for only 2 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).

 

See an overview of the requirements for a Section 1(b) application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Proper Response to Final Action – Partial Refusal(s)/Requirement(s)

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

“Water-soluble and dissolvable sweetening powder mix for food and beverages; Water-soluble and dissolvable liquid sweetening mix for food and beverages”. 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the remaining goods and classes.  

 

Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

RESPONSE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@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 October 27, 2020 for

U.S. Trademark Application Serial No. 88708145

 

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. 

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@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 October 27, 2020, 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.”