To: | Miyamoto, LLC (ipprosecution@orrick.com) |
Subject: | U.S. Trademark Application Serial No. 88827054 - JAUNT - 45366.1 |
Sent: | May 28, 2020 03:58:20 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88827054
Mark: JAUNT
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Correspondence Address:
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Applicant: Miyamoto, LLC
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Reference/Docket No. 45366.1
Correspondence Email Address: |
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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.
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.
NO LIKELIHOOD OF CONFUSION
Please see below for details.
PARTIAL REQUIREMENT AND PARTIAL ABANDONMENT ADVISORY
PARTIAL REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOODS
“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
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).
The applicant has applied to register the mark for:
IC 30: Coffee, coffee extracts, flavored coffee; coffee-based beverages and preparations for making coffee-based beverages; vegetal preparations for use as coffee substitutes; tea, tea extracts, tea-based beverages and preparations for making tea-based beverages; cocoa and cocoa-based preparations in the nature of cocoa spreads, cocoa powder, cocoa mixes, and cocoa based beverages; chocolate based ready to eat food bars, chocolate-based snack foods and chocolate-based beverages; cereals, processed; cereal preparations, namely, cereal-based energy bars; cereal-based snack foods; edible spices; condiments; Powdered instant beverage mixes for making tea-based beverages featuring mushrooms
Portions of the identification of goods are indefinite and must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification 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.
Applicant may adopt the following wording, if accurate:
IC 30: Coffee, coffee extracts, flavored coffee; coffee-based beverages and preparations for making coffee-based beverages; vegetal preparations for use as coffee substitutes; tea, tea extracts, tea-based beverages and preparations for making tea-based beverages; cocoa and cocoa-based preparations in the nature of cocoa spreads, cocoa powder, cocoa mixes, and cocoa based beverages; chocolate based ready to eat food bars, chocolate-based snack foods and chocolate-based beverages; cereals, processed; cereal preparations, namely, cereal-based energy bars; cereal-based snack foods; edible spices; condiments, namely, [specify, e.g., pepper sauce, oyster sauce, etc.]; Powdered instant beverage mixes for making tea-based beverages [clarify how “tea-based beverages” can feature mushrooms]
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.
PARTIAL ABANDONMENT ADVISORY
If applicant does not respond to this Office action within the six-month period for response, the goods objected to above will be deleted from the application. The application will then proceed with the following goods only:
IC 30: Coffee, coffee extracts, flavored coffee; coffee-based beverages and preparations for making coffee-based beverages; vegetal preparations for use as coffee substitutes; tea, tea extracts, tea-based beverages and preparations for making tea-based beverages; cocoa and cocoa-based preparations in the nature of cocoa spreads, cocoa powder, cocoa mixes, and cocoa based beverages; chocolate based ready to eat food bars, chocolate-based snack foods and chocolate-based beverages; cereals, processed; cereal preparations, namely, cereal-based energy bars; cereal-based snack foods; edible spices
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
/Nancy L. Clarke/
Examining Attorney
Law Office 102
Tel. (571) 272-9253
E-mail: nancy.clarke@uspto.gov
ADDITIONAL RESPONSE GUIDANCE