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:  December 03, 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.

 

 

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.

 

SUMMARY OF ISSUES:

 

• Identification of goods advisory
• Representative specimens of use required
• U.S. Attorney information and clarification required

 

 

 

IDENTIFICATION OF GOODS ADVISORY

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 21 for “Drinking flasks.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may adopt the following wording, if accurate.  Duplicate wording that the examining attorney suggests be deleted appears in bold strike text:

 

International Class 21: Combs; Apparatus for cleaning teeth and gums using high pressure water for home use; Bottles for pharmaceuticals sold empty; Cosmetic spatulas; Drinking flasks; Drinking flasks; Electric tooth brushes; Fly traps; Gloves for household purposes; Insulated bags for food or beverage for domestic use; Lunch boxes; Perfume burners; Water apparatus for cleaning teeth and gums for home use; Bath brushes; Clothes brushes; Cosmetic brushes; Crumb brushes; Droppers sold empty for cosmetic purposes; Electric devices for cleaning cosmetic brushes; Eyebrow brushes; Eyelash brushes; Hair brushes; Motorized applicators for applying cosmetics to eyelashes; Nail brushes; Non-electric kettles; Non-woven fabric cosmetic wipes; Shoe brushes; Thermal insulated bags for food or beverages; Toilet brushes; Tooth brushes; Washing brushes

 

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.

REPRESENTATIVE SPECIMENS REQUIRED

Given the wide variety and range of unrelated goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b).  37 C.F.R. §2.61(b); see TMEP §904.01(a).

Applicant should submit specimens demonstrating use of the mark on all of the following goods:

1.     Combs

2.     Bottles for pharmaceuticals sold empty

3.     Cosmetic spatulas

4.     Drinking flasks

5.     Fly traps

6.     Gloves for household purposes

7.     Insulated bags for food or beverage for domestic use

8.     Perfume burners

9.     Clothes brushes

10.  Cosmetic brushes

11.  Crumb brushes

12.  Droppers sold empty for cosmetic purposes

13.  Electric devices for cleaning cosmetic brushes

14.  Non-electric kettles

15.  Non-woven fabric cosmetic wipes

16.  Toilet brushes

If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b).  This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.

Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

U.S. ATTORNEY INFORMATION AND CLARIFICATION REQUIRED

 

Attorney bar or other licensing authority number required.  Applicant’s attorney entered “N/A” in the field for the attorney bar number; however, all U.S.-licensed attorneys representing applicants before the USPTO must provide the number used by the U.S. state, commonwealth, or territory that licenses the attorney, when one is issued.  37 C.F.R. §2.17(b)(3).  This number is generally available to the public and may be called by different names in different U.S. states, commonwealths, or territories, such as a bar number, membership number, an account number, an identification number, or a registration number.  If the U.S. state, commonwealth, or territory does not issue such a number, applicant must state this for the record.  See id.

 

Attorney bar credentials required. The application record indicates that applicant is represented by Feng Lin who is purportedly a member of the bar of California; however, the record indicates that this individual is not qualified to practice before the USPTO because the attached screenshots from the website for the State Bar of California show no results for a search of this name. See 37 C.F.R. §11.14(a); TMEP §§602 et seq. Only attorneys who are active members in good standing of the bar of a highest court of a U.S. state (including the District of Columbia or any U.S. commonwealth or territory) may practice before the USPTO in trademark matters. 37 C.F.R. §§2.17(a), 11.14; TMEP §§602.01-.03. Accordingly, applicant must provide documentation showing the attorney’s active bar membership in good standing in the designated bar, such as a certificate of good standing, a letter from the bar, or if the bar lists a member’s standing and admission details, a webpage containing the details from the bar’s website, showing the URL and access or print date. 37 C.F.R. §§2.17(b)(3), 2.61(b). 

 

If the originally submitted attorney bar information is incorrect, applicant’s attorney must specify the correct bar information and provide supporting documentation showing the attorney’s active bar membership in good standing. 37 C.F.R. §§2.17(b)(3), 2.61(b). Otherwise, applicant may appoint or designate a different attorney who is qualified to practice before the USPTO under 37 C.F.R. §11.14. See 37 C.F.R. §2.17(a).

 

Failure to comply with this requirement is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that the attorney’s bar information is available on a state bar’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

To provide an attorney bar or other licensing authority number.  Applicant’s U.S.-licensed attorney must respond to this Office action by using the appropriate TEAS response form and provide his or her bar number or the number provided by the U.S. state, commonwealth, or territory used to identify the attorney in the “Attorney Information” page of the form, within the bar information section.  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 December 03, 2020 for

U.S. Trademark Application Serial No. 90158987

 

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. 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 December 03, 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.”