UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 10/30/2018

 

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.

 

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).

 

SUMMARY OF ISSUES:

 

• Amendment of identification of goods
• Name of an individual in mark

 

The following informalities must be addressed.

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified because it fails to identify all of the goods specifically enough for the Office to classify them.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, the identification of goods and/or services 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 and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services 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 or bracketed information into the description of the goods and/or services.

 

Applicant may adopt the following identification, if accurate:

 

“Natural products for human use, namely, a formula composed of saw palmetto, pygeum, stinging nettle, white deadnettle, common heather and bearberry, all in the form of capsules for relieving benign prostate hyperplasia symptoms; glucosamine sulphate and chondroitin formula, chitosan oligosaccharides, MSM and collagen, in the form of tablets for relieving joint pain and symptoms related to arthritis and osteoarthritis and for contributing to the formation of healthy cartilage; plant extracts in the form of capsules for improving the health, for reducing the frequency of climateric episodes being hot flashes, improving the neurovegetative state associated with menopause, improving blood cholesterol levels, alleviating excessive perspiration and enabling regulation of a disrupted sleep cycle; Natural products for human use, namely, meal replacements in the form of meal replacement bars which taste like peanuts, crème caramel, fruit, chocolate, apple-cinnamon, coffee, granola and chocolate chips to assist in weight loss and weight maintenance; Natural products for human use, namely, capsules containing plant extracts to assist in weight loss; Natural products for human use, namely, a vitamin and mineral supplement formula to remedy vitamin and mineral deficiencies; plant extract formulas with calming antioxidant properties, plant extract formulas possessing immune system benefits, to help balance mood swings, aiming at palliating the reduction of estrogen in menopausal women, antioxidants in the form of tablets, for maintaining good health; Natural products for human use, namely, plant and vitamin extracts in the form of ampoules and capsules for soothing respiratory symptoms due to a cold, flu, bronchitis and for increasing the bio-availability of Vitamin C by decreasing its elimination and oxidation; Natural products for human use, namely, plant extracts in the form of infusions, capsules, with purifying, eliminative, diuretic and laxative actions; Natural products for human use, namely, oligosaccharide chitosan capsules assisting in controlling cholesterol; Natural products for human use, namely, chitosan oligosaccharide ampoules and creams to soothe joint pain and act as anti-inflammatories for joints; Natural products for human use, namely, vitamin supplement formulas in the form of gelcaps for maintaining an appropriate level of antioxidants in the body to palliate oxidative stress; vitamin supplement formulas in the form of tablets to assist in balancing human metabolism, namely, carbohydrate levels and to assist in reducing homocysteine levels; mineral formulas in the form of capsules and tablets for remedying magnesium deficiencies; Natural products for human use, namely, a supplement formula made of vitamins, plants and adaptogenic roots in the form of energizing ampoules, to increase resistance to stress and decrease the feeling of fatigue, to decrease hyperglycemia and stimulate weakened immune systems and cognitive functions; Natural products for human use, namely, a supplement formula made of adaptogenic plants and roots in the form of energizing ampoules, to increase resistance to stress and decrease the feeling of fatigue, to decrease hyperglycemia and stimulate weakened immune systems and cognitive functions; Natural products for human use, namely, plant and root extracts in the form of capsules and ampoules to assist in slowing the advancement of benign prostate hypertrophy, controlling sleep disorders, preventing and treating urinary tract infections, soothing respiratory symptoms stemming from a cold or flu, treating moderate Alzheimer's, facilitating digestion of food and to assist in reducing symptoms associated with digestive disorders; plant, root, and bark extracts in capsule form for treating lumbar pain, arthritis pain, rheumatic disorders; plant extracts in capsule form for soothing respiratory symptoms due to a cold or flu, the formula of which has proven to be an immuno-stimulant in preclinical studies; leaf, root, and bark extracts in the form of infusions, and capsules with a purifying, eliminative, diuretic and laxative action; Natural products for human use, namely, leaf, flower, and bark extracts in the form of capsules for combating sleep disorders and reducing nervousness; Natural products for human use, namely, a vitamin supplement and antioxidant fruit extract formula in the form of capsules to assist in decreasing the duration and severity of cold symptoms, slowing down the development of atherosclerosis, improving blood circulation and blood pressure; a food supplement formula in the form of gelcaps containing soya lecithin and carthane oil to prevent memory disorders and hypercholesterolemia; plant extracts in the form of capsules to assist in fighting hypertension or hypercholesterolemia; a vitamin and mineral food supplement formula in the form of tablets to stimulate the appetite, treat acne and furunculosis; a fatty acid and vitamin formula in the form of capsules for physical endurance, cholesterol level management and for the maintenance of good health; oils in the form of gelcaps rich in fatty acids and vitamin E for prostate health; Natural products for human use, namely, plant extracts and antioxidant roots and fish oils in the form of capsules, gelcaps, liquids, to assist in reducing the damage caused by oxidative stress, decreasing the risk of prostate cancer and lung cancer, coronary illnesses, to assist in treating rheumatoid arthritis, to improve muscular strength and endurance and to accelerate recovery after an injury, to soothe urological symptoms associated with benign prostate hyperplasia, to improve the cognitive functions of patients suffering from Alzheimer's or minor memory disorders, to combat general fatigue, to assist in preventing macular degeneration associated with age, cataracts, the maintenance of proper retina functioning, the maintenance of cardiovascular and cognitive health, to contribute to the development and proper functioning of the brain, for preventing and treating urinary tract infections, to assist in diminishing the risks of prostate cancer and lung cancer, to assist in reducing the symptoms of light to moderate depression, improving memory and immune system activity; Natural products for human use, namely, yoghurt culture in the form of capsules contributing to the regulation of intestinal flora, stimulating the immune system; Natural products for human use, namely, potassium gluconate in the form of tablets for preventing hypokalemia and hypertension; Natural products for human use, namely, an essentially fatty acid formula in the form of gelcaps to assist in fighting eczema, premenstrual syndrome and menopausal symptoms; Natural products for human use, namely, chitin formula made from crustacean shells, organic beef trachea, chicken sternum extracts and standardized resin extracts in the form of capsules and tablets to assist in soothing osteoarthritis symptoms, to reduce joint pain, protect against cartilage deterioration resulting from chronic joint disorders and play a role in the maintenance and building of cartilage, diminish the pain associated with arthritis, assist in slowing the progression of joint erosion, reduce the risk of osteoporosis in arthritic patients; Natural products for human use, namely, a vitamin and mineral supplement formula in the form of capsules, tablets and ampoules for soothing the symptoms of menopause, relaxing muscles, reducing nervous tension, reducing premenstrual syndrome symptoms, decreasing edema, reducing the volume/circumference of the legs, decreasing pain and tension in the legs, maintaining bone mass, preventing osteoporosis, fighting fatigue associated with anemia, preventing anemia; Natural products for human use, namely, type II collagen containing chondroitin and hyaluronic acid in the form of capsules for maintaining connective tissues, namely, joints and skin; Natural products for human use, namely, gel in the form of ampoules to combat aging and fatigue; Natural products for human use, namely, soluble fibers in the form of capsules for intestinal regularity; Natural products for human use, namely, plant and mineral extracts in the form of capsules and liquids to promote intestinal regularity and to aid in digestion and purify being detoxify; Natural products for human use, namely, mineral formulas in the form of capsules and tablets to remedy calcium deficiencies” in International Class 5.

 

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.

 

Name of an Individual in Mark

 

Applicant must clarify whether the name “ADRIEN GAGNON” 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:  “ADRIEN GAGNON” 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, ADRIEN GAGNON, consent to the use and registration of my name, “ADRIEN GAGNON”, 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 to Office Action

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

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.  

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Jenny Park/

Examining Attorney

Law Office 104

571-272-8857

jenny.park@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/30/2018 FOR U.S. APPLICATION SERIAL NO. 88025012

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/30/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.