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
• Identification of Goods and Services Requirement

 

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 requirement.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

Applicant has identified the following goods: “printed matter, namely, recipe books; in-store signage; shelf talkers; flyers; coupons” in Class 16 and “Operation of an internet website providing information concerning bakery products and nutrition; providing information and recipes relating to bread and bakery products; providing information about nutrition” in Class 41.

 

The wording “flyers” in the identification of goods is indefinite and must be clarified because is not sufficiently specific; applicant must specify the subject matter of the flyers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, applicant must clarify the wording “in-store signage” in the identification of goods in International Class 16 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, “in-store signage, namely, non-luminous and non-mechanical metal signs” are in International Class 6, “in-store signage, namely, electronic signs” are in Class 9, “in-store signage, namely, advertising signs of paper and cardboard” are in Class 16, “in-store signage, namely, non-luminous and non-mechanical signs not of metal” are in Class 19, and “in-store signage, namely, inflatable plastic signs” are in Class 20.  If applicant adds any classes, applicant must satisfy the requirements detailed in the Multiple-Class Application Requirements Advisory below.

 

Applicant must clarify “shelf talkers” because it is indefinite and too broad. 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, “shelf talkers, namely, non-luminous and non-mechanical metal signs for shelves” are in Class 6, “shelf talkers, namely, electronic signs for shelves” are in Class 9, “shelf talkers, namely, advertising signs of paper and cardboard for shelves” are in Class 16, and “shelf talkers, namely, non-luminous and non-mechanical signs not of metal for shelves” are in Class 19.

 

Applicant must also clarify “Operation of an internet website providing information concerning bakery products and nutrition” because it is indefinite and too broad. 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, “Providing an internet website featuring information concerning bakery products” is in Class 43 and “Providing an internet website featuring information concerning nutrition” is in Class 44.

 

Moreover, the services are classified incorrectly.  Applicant must amend the application to classify “providing information and recipes relating to bread and bakery products” in International Class 43 and “providing information about nutrition” in Class 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant may substitute the following wording, if accurate:

 

“in-store signage, namely, non-luminous and non-mechanical metal signs; shelf talkers, namely, non-luminous and non-mechanical metal signs for shelves” in Class 6

 

“in-store signage, namely, electronic signs; shelf talkers, namely, electronic signs for shelves” in Class 9

 

“printed matter, namely, recipe books; in-store signage, namely, advertising signs of paper and cardboard; shelf talkers, namely, advertising signs of paper and cardboard for shelves; informational flyers featuring bakery and food products; coupons” in Class 16

 

“in-store signage, namely, non-luminous and non-mechanical signs not of metal; shelf talkers, namely, non-luminous and non-mechanical signs not of metal for shelves” in Class 19

 

“in-store signage, namely, inflatable plastic signs” in Class 20

 

“Providing an internet website featuring information concerning bakery products; providing information and recipes relating to bread and bakery products” in Class 43

 

“Providing an internet website featuring information concerning nutrition; providing information about nutrition” in Class 44

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 6, 9, 16, 19, 20, 43, and 44.  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 and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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 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 7 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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.

 

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. 90028863

 

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.”