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:  January 04, 2020

 

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.

 

SUMMARY OF ISSUES:

 

• AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED
• SIGNIFICANCE OF WORDING IN THE MARK REQUIRED
• DECLARATION INCOMPLETE- COMPLETE DECLARATION REQUIRED

 

SEARCH RESULTS

 

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).

 

However, applicant must respond to the issues below.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED

 

The wording in the identification of goods is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Generally, applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Specifically, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods or delete the matter entirely where specifically indicated below.

 

Additionally, the wording “included in Class 34” must be deleted from the identification because goods cannot be identified by their presence or absence in a particular class and this wording is not part of the common commercial or generic name for the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.06(a).

 

Next, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Also, in each instance where further clarification is required as to the nature of the goods, the examining attorney has provided a suggestion for an acceptable amendment in bold, italics and underline below. If the particular suggestions are not accurate or comprehensive, the applicant may utilize the USPTO’s online identification manual (link below) to search for the goods contemplated. For example, the wording “Wired vaporizer for electronic cigarettes and electronic smoking devices” is indefinite and the applicant must further specify the purpose or use of the goods, such as “wired oral vaporizers…for smoking purposes,” as shown below.

 

Applicant may substitute the following wording, if accurate: 

 

Class 34: Wired oral vaporizer for electronic cigarettes and electronic smoking devices for smoking purposes; tobacco, raw or manufactured; tobacco products, including namely, cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek in the nature of cigarettes; tobacco powder, namely, snus; tobacco substitutes, not for medical purposes (not for medical purposes); smokers' articles, including namely, cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, smoking pipes, pocket apparatus for rolling cigarettes, cigarette lighters; matches; tobacco sticks in the nature of pipe tobacco, tobacco products for the purpose of being heated, namely, tobacco powder; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, namely, electronic smoking pipes; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices, namely, electronic cigars; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol, namely, oral vaporizers for smoking purposes; oral vaporising devices for smokers, tobacco products and tobacco substitutes for smoking purposes; smoker's articles for electronic cigarettes, namely, smokers’ mouthpieces for electronic cigarettes; replacement and structural parts and fittings for the aforesaid products included in class 34; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks, namely, metal pocket-sized receptacles with lids for cigarette butts; electronic rechargeable cigarette cases.

 

SCOPE ADVISORY: 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).

 

ASSISTANCE: 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.

 

For information on how to identify the goods in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”

 

SIGNIFICANCE OF WORDING IN THE MARK REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording in the mark “TEREA” has any meaning or significance in the industry in which the goods are manufactured/provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation:  “The English translation of “TEREA” is “{specify, if appropriate}”.” 

 

The format for when there is no English translation:  “The wording “TEREA” has no meaning in a foreign language.”

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

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.

 

DECLARATION INCOMPLETE- COMPLETE DECLARATION REQUIRED

 

The declaration submitted in the preliminary amendment is not acceptable because it omits some of the assurances required under 37 C.F.R. §§2.33 and/or 2.34.  TMEP §804.02.  Specifically, the following statement was omitted:  “The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 

 

Applicant must therefore submit this assurance, properly verified in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02.  For more information about this, see the Verified statement webpage.

 

To provide this verified statement.  After opening the correct TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

RESPONSE GUIDELINES

 

If the applicant has any questions, please email or telephone the trademark examining attorney with the specific 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.    

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 January 04, 2020 for

U.S. Trademark Application Serial No. 88724497

 

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. 

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 January 04, 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.”