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:  October 09, 2020

 

 

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.

 

SUMMARY OF ISSUES:

• Prior-Pending Application Advisory
• Disclaimer Requirement
• Identification of Goods Requirement
• Multiple-Class Application Requirements Advisory

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

PRIOR-PENDING APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 88663071 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

However, applicant must respond to the following requirements.

 

DISCLAIMER REQUIREMENT

 

Applicant must disclaim the wording “SWEET” and “TASTY” because it is merely descriptive of a characteristic of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence shows the word “SWEET” means “Having the taste of sugar or a substance containing or resembling sugar, as honey or saccharin.”  See http://www.ahdictionary.com/word/search.html?q=sweet.  Thus, the wording merely describes applicant’s goods because they are stated broadly enough to encompass bakery and flatbread products, granola- and cereal-based products, and snack products that have the taste of something resembling sugar.

 

The attached evidence shows the word “TASTY” means “having a pleasant, distinct flavor.”  See http://www.lexico.com/en/definition/tasty.  Thus, the wording merely describes applicant’s goods because they are stated broadly enough to encompass bakery and flatbread products, granola- and cereal-based products, and snack products that have a pleasant, distinct flavor.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SWEET” and “TASTY” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

IDENTIFICATION OF GOODS REQUIREMENT

 

Applicant has identified the following goods: “Bakery products, namely, bread, rolls, buns, bagels, pitas, wraps, tortillas, English muffins, hot dog and hamburger buns, cookies, biscuits, crackers, croissants, cakes, cupcakes, pies, fruit cakes, doughnuts, pastries, strudel, muffins, sweet buns, brownies, Danishes, biscotti, waffles, turnovers, cinnamon rolls, scones, flat bread; flatbread products, namely, naans, naan crisps, Greek pita, lavash, pitas, pita bread, pita chips, pita crackers; pie and tart shells, pastry shells, pizza shells, bread sticks, pretzels, snack food bars consisting of cereals, nuts, granola, wheat, grains; granola bars; cereal bars; breakfast cereals; single-serve cups with cereal; oatmeal; instant oatmeal cups; oatmeal bars; nutritional snack balls consisting of cereals, nuts, granola, wheat, grains; nutritional snack bites consisting of cereals, nuts, granola, wheat, grains; snack cakes; granola mix; trail mix; mueslis” in Class 30.

 

The wording “wraps,” “turnovers,” “single-serve cups with cereal,” “instant oatmeal cups,” “oatmeal bars,” and “granola mix” in the identification of goods is indefinite and must be clarified because it does not make clear what the goods are or is not sufficiently specific.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, the following wording is indefinite and must be clarified to indicate which food component is the primary component, which must be listed first: “snack food bars consisting of cereals, nuts, granola, wheat, grains,” “nutritional snack balls consisting of cereals, nuts, granola, wheat, grains,” and “nutritional snack bites consisting of cereals, nuts, granola, wheat, grains.”

 

Further, applicant must clarify the wording “trail mix” in the identification of goods in International Class 30 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “Trail mix consisting primarily of processed nuts, and also including granola” is in International Class 29 and “trail mix consisting primarily of granola, and also including dried fruit, chocolate, processed nuts, and grains” is in International Class 30.  If additional classes are added to the application, the applicant must satisfy the multiple-class application requirements detailed below.

 

Applicant may substitute the following wording, if accurate:

 

“Trail mix consisting primarily of {specify type of food in Class 29, e.g., processed nuts}, and also including {specify other foods}” in Class 29

 

“Bakery products, namely, bread, rolls, buns, bagels, pitas, sandwich wraps, tortillas, English muffins, hot dog and hamburger buns, cookies, biscuits, crackers, croissants, cakes, cupcakes, pies, fruit cakes, doughnuts, pastries, strudel, muffins, sweet buns, brownies, Danishes, biscotti, waffles, fruit turnovers, cinnamon rolls, scones, flat bread; flatbread products, namely, naans, naan crisps, Greek pita, lavash, pitas, pita bread, pita chips, pita crackers; pie and tart shells, pastry shells, pizza shells, bread sticks, pretzels, snack food bars consisting primarily of cereals, and also containing nuts, granola, wheat, grains; granola bars; cereal bars; breakfast cereals; breakfast cereal packaged in single-serve cups; oatmeal; instant oatmeal packaged in cups; oatmeal-based food bars; nutritional snack balls consisting primarily of cereals and also containing nuts, granola, wheat, grains; nutritional snack bites consisting primarily of cereals, and also containing nuts, granola, wheat, grains; snack cakes; snack mix consisting of granola; trail mix consisting primarily of granola, and also including dried fruit, chocolate, processed nuts, and grains; mueslis” in Class 30

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 29 and 30.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class 30; and applicant needs a specimen for class 29.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

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.    

 

 

/Christopher J Nodes/

Christopher J Nodes

Examining Attorney

Law Office 116

(571) 272-5220

christopher.nodes@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 October 09, 2020 for

U.S. Trademark Application Serial No. 90028812

 

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. 

 

 

/Christopher J Nodes/

Christopher J Nodes

Examining Attorney

Law Office 116

(571) 272-5220

christopher.nodes@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 October 09, 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.”