Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  December 12, 2021

 

 

This letter responds to Applicant’s communication filed December 9, 2021. 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Application suspended until submission of foreign registration or proof that foreign registration was renewed.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Refusal(s) and/or requirement(s) maintained and continued:

 

• Refusal to Register – Specimen Unacceptable – International Class 11

• Identification of Goods – International Classes 11 & 21

• Identification of Goods – International Class 10 - Reinstated

 

REFUSAL TO REGISTER – SPECIMEN UNACCEPTABLE – INTERNATIONAL CLASS 11 – CONTINUED & MAINTAINED

           

The specimens of use do not show the applied-for mark used in connection with goods that may be properly classified in international class 11.  Specifically, vaporizers in international class 11 are for household purposes, whereas the vaporizers depicted on the specimen of use are for personal use, namely, inhalation of aromatic oils in international class 21, and as a smokers’ article in class 34.  This is readily apparent by the pictures of the goods on the specimens of use that show a straw-like inhalation appendage.  As such, these are not household vaporizers, and the refusal to register under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127 is continued and maintained.

 

IDENTIFICATION OF GOODS – INTERNATIONAL CLASSES 11 & 21 – CONTINUED & MAINTAINED

 

The proposed identification of goods remains indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In particular, for international class 11, Applicant must provide greater specificity with regard to, the “personal use” in the clause.  Class 11, are for vaporizers of an industrial or steam-generated nature and requires further specificity. 

 

Similarly, for international class 21, Applicant must provide greater specificity with regard to the “personal use” in the phrase, “hand operated vaporisers for personal or household purposes sold empty”.  As stated, the wording is indefinite and may include goods in more than the stated international class.  International class 21 includes hand operated non-electrical vaporizers and electrical vaporizers as aromatic oil diffusers.

 

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.

 

Please note that failure to address this issue shall result in all specified indefinite terms being deleted from the identification.  For Applicant’s convenience, all indefinite terms and phrases have been bolded or deleted.

 

Applicant may adopt the following identification of goods, if accurate:

 

International class 11 – power-operated electrical vaporisers for vaporizing herbs and essences for household purposes

 

International class 21 - Hand operated vaporisers for household purposes sold empty; electric heated vaporisers for vaporising aromatic and essential oil essences, not for therapeutic purposes; inhalers for personal or household purposes sold empty, not for medical or therapeutic use

 

NOTE:  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).

 

IDENTIFICATION OF GOODS – INTERNATIONAL CLASS 10 - REINSTATED

 

Please note that after further examination, the proposed identification of goods for international class 10 remains indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Upon removal from suspension, a requirement for a definite identification of goods will be re-issued for this class.  The examining attorney apologizes for any inconvenience.

 

Applicant may adopt the following identification of goods, if accurate:

 

International class 10 - Inhalers sold empty, namely, heated inhalers for therapeutic purposes

 

See id.  These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/VJ/

Gene V.J. Maciol, II

Attorney-advisor

Law Office 103

gene.maciol@uspto.gov

571-273-9280 fx

571-272-9280 ph

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 12, 2021 for

U.S. Trademark Application Serial No. 88981787

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You may be required to respond to this Office action.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action, if a response is required.  Respond by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.