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:  January 25, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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:

• REQUIREMENT – AMENDMENT TO IDENTIFICATION OF GOODS

 

I.                    REQUIREMENT – AMENDMENT TO IDENTIFICATION OF GOODS

 

 The applicant must clarify some of the wording in the identification of goods because such wordings are indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  These wordings are indefinite because such wordings do not make clear the exact nature, function, or type of the goods.  See TMEP §1402.01. 

 

Specifically, the identification for “hobbycraft kits” in International Class 028 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Hobby craft kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to specify more clearly the majority of the kit’s components or the type of kit being made, so as to enable appropriate classification, using the guidelines below.  See id.

 

For hobby craft kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a hobby craft kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “Halloween hobby craft kits comprised of permanent markers, printed sewing patterns, stencils, fabric glue for household use and felt cloth” is classified in International Class 16, the class of the primary components (i.e., permanent markers, printed sewing patterns, stencils, and fabric glue for household use) which are listed first in the list of kit components.

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “Halloween hobby craft kits comprised of permanent markers and felt cloth” are in International Class 16 (the class for “permanent markers”), and “Halloween hobby craft kits comprised of felt cloth and permanent markers” are in International Class 24 (the class for “felt cloth”).

 

For hobby craft kits that make a particular product, the identification must specify the product being made using the following format:  “hobby craft kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “hobby craft kits for making toy model houses comprising wooden craft sticks and craft glue for stationery or household purposes” is classified in International Class 28, the class for toy models, even though the individual components would be classified in other classes (e.g., wooden craft sticks in International Class 20 and craft glue for stationery or household purposes in International Class 16).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

Applicant should note that any wording in bold, in italics, underlined or in ALL CAPS below offers guidance and shows the changes being proposed for the identification of goods.  If there is wording in the applicant’s version of the identification of goods which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate: 

 

Class 028:       “Toys relating to an animated television series, namely, target games, kites, toy action figures, board games, card games, disc type toss toys, archery equipment, namely, bows and arrows, baseballs, basketballs, beach balls, bowling balls, golf balls, playground balls, punching balls, racquet balls, soccer balls, tennis balls, squash balls, stress relief balls for hand exercise, and volley balls, dolls, doll playsets, plush toys, toy vehicles, toy bucket and shovel sets, roller skates, toy model hobbycraft kits comprised primarily of ______ {specify items primarily comprising the kits which would be classified in Class 028 otherwise, e.g., printed sewing patterns, stencils, permanent markers} and secondarily comprising ______ {specify other objects comprised within the kits, e.g., wooden craft sticks, craft glue, paints for arts and crafts}, toy rockets, toy guns, toy holsters, musical toys, jigsaw puzzles, badminton sets, bubble-making wands and solutions sets, toy figures, toy banks, puppets, toy balloons, yo-yos, skateboards, toy scooters, costume face masks.”

 

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.

 

ASSISTANCE

 

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 requirement 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.    

 

 

/Daniel Travis Bice/

D. Travis Bice

Trademark Examining Attorney

Law Office 128

Telephone:  (571) 272-3385

Email: Daniel.Bice@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 January 25, 2021 for

U.S. Trademark Application Serial No. 90175377

 

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. 

 

 

/Daniel Travis Bice/

D. Travis Bice

Trademark Examining Attorney

Law Office 128

Telephone:  (571) 272-3385

Email: Daniel.Bice@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 January 25, 2021, 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.”