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:  August 17, 2020

 

SEARCH DEFERRED

 

The trademark examining attorney will defer a search of the USPTO database of registered and pending marks for potentially conflicting marksuntil applicant responds to the issues raised in this Office action.  TMEP §704.02. Once applicant addresses the issue(s) below, a search of pending an potentially conflicting marks may result in a refusal of registration of the applied-for application.

 

SUMMARY OF ISSUES:

• IDENTIFICATION OF GOODS AND SERVICES
• MARK DESCRIPTION

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Here, applicant should not sort its goods with (a) and (b) then (i) and (ii) etc.

 

The wording “including but not limited to” in the identification of goods is indefinite and must be clarified by (1) specifying the common commercial or generic name for these goods, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).

 

In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

Similarly, the identification for “accessories” in International Class 9 is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  For example, Cell phone auxiliary cables are classified in International Class 9, while Support brackets made of metal for attachment to furniture to support cell phones to be kept in hands reach are classified in International Class 6. Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a). 

 

Finally, wholesale services are classified in International Class 35.

 

Applicant may adopt the following wording, if accurate: 

 

“Accessories for new, and recycled, refurbished and reconditioned cellphones and tablets, namely, support brackets made of metal for attachment to furniture to support cell phones to be kept in hands reach,” in International Class 6;

 

“Cellular phones, namely, new, and recycled, refurbished and reconditioned cellphones; accessories for new, and recycled, refurbished and reconditioned cellphones and tablets, namely, {specify e.g. Cell phone auxiliary cables},” in International Class 9;

 

“Wholesale services by direct solicitation by sales agents featuring new, and recycled, refurbished and reconditioned, electronic appliances and devices, namely cellphones, and accessories for new and recycled, refurbished and reconditioned cellphones and tablets, namely, cell phone auxiliary cables; Wholesale store services featuring new, and recycled, refurbished and reconditioned, electronic appliances and devices, namely cellphones, and accessories for new and recycled, refurbished and reconditioned cellphones and tablets, namely, cell phone auxiliary cables; Wholesale distributorships featuring new, and recycled, refurbished and reconditioned, electronic appliances and devices, namely cellphones, and accessories for new and recycled, refurbished and reconditioned cellphones and tablets, namely, cell phone auxiliary cables,” in International Class 35.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

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.

 

MULTI-CLASS ADVISORY

 

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 three classes; however, applicant submitted a fee(s) sufficient for only one 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

MARK DESCRIPTION

 

The mark description includes a redundancy which should be deleted so the description is more concise. TMEP §808.02.

 

The mark consists of The mark consists of two wings and a five pointed crown situated above the word "Elite". The letters 'e', 'l', 't' and 'e' of the word "Elite" are in the same font, and the letter 'i' of the word "Elite" is comprised of three (3) vertical lines of equal length. The letter 't' of the word "Elite" is somewhat off-center with the vertical base of the letter not striking the exact center of the horizontal top of the letter.

 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 response to this nonfinal Office action.    

 

 

/Chris Reams/

Chris Reams

Examining Attorney

Law Office 124

571-272-7815

Christopher.reams@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 August 17, 2020 for

U.S. Trademark Application Serial No. 90025838

 

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. 

 

 

/Chris Reams/

Chris Reams

Examining Attorney

Law Office 124

571-272-7815

Christopher.reams@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 August 17, 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.”