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:  March 24, 2021

 

 

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:

• Acceptable identification of goods

 

 

IDENTIFICATION OF GOODS:

 

The identification of goods is indefinite and must be clarified because certain items are overly broad and others are improperly classified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

International Class 3: cosmetic masks

 

International Class 4: patio torches

 

International Class 5: medical adhesive tape

 

International Class 7: electric pizza cutters

 

International Class 8: Penknives; hand tools and implements, namely, [applicant must specify the common commercial name of the goods, i.e. hammers, levers, etc.]; table cutlery; non-electric shavers, razors; non-electric pizza cutters; cake cutters; window hand operated scrapers for removing ice from vehicle windows

 

International Class 9: Audio recording devices, namely, [applicant must specify the common commercial name of the goods, i.e. tape recorders, audio recorders, etc.]; timers; cases for spectacles; apparatus for recording, transmission or reproduction of sound or images; audio speakers; headphones; accessories for mobile telephones and styluses for touchscreen devices, namely, [applicant must specify the common commercial name of the goods, i.e. belt clips, etc.]; camera lenses; fridge magnets; decorative magnets

 

International Class 10: Fashion masks being sanitary masks for protection against viral infection

 

International Class 11: electric torches for lighting, portable reading lights; apparatus for lighting, heating, cooking and ventilating and for sanitary purposes, namely, [applicant must specify the common commercial name of the goods, i.e. lighting installations, USB-powered hand warmers (other than clothing); electric candelabras

 

International Class 14: Precious metals and their alloys; clocks, watches; alarm clocks; key rings; jewellery; imitation jewellery; badges of precious metal; breast lapel pins; figurines, statuettes and busts of precious metal; jewellery boxes; key chains, key rings

 

International Class 16: Paper, cardboard; pens; toilet paper; rubber stamps, stickers; printed posters; adhesive tape for stationery purposes; masks [this item is indefinite and properly classified in other international classes]; printed books in the field of [applicant must specify the subject matter]; printed matter, namely, [applicant must specify the common commercial name of the goods], stationery; printed notebooks; sticky notes; paper staplers; paper clips; pencil toppers namely, decorations for pencils; desk tidies; height charts printed charts for displaying data about human height; sticky tape namely, adhesive tapes for stationery or household purposes; decorative sticky tape namely, adhesive tapes for stationery or household purposes; passport covers

 

International Class 17: adhesive tape for industrial or commercial use

 

International Class 18: Luggage tags; business card cases; leather and imitations of leather; trunks being luggage and travelling bags; bags, namely, [applicant must specify the common commercial name of the goods, i.e. handbags, etc.]; purses; umbrellas; luggage tags

 

International Class 20: Mirrors; picture frames; furniture; bins, not of metal; key chains, key rings [these items are properly classified in class 14]; key covers Key caps, namely, plastic or rubber caps used to cover the tops of keys

 

International Class 21: Kitchenware namely, [applicant must specify the common commercial name of the goods, i.e. , etc.]; drinking vessels; glasses, mugs, cups; hip flasks; salt and pepper pots; bottle openers; corkscrews; vacuum bottle stoppers; egg cups; toast stamps namely, [applicant must specify the common commercial name of the goods]; saucepans; frying pans; washing-up brushes; drinking straws (drinking); spaghetti measurers; cake moulds; ice cream scoops; ice cube trays; cocktail shakers; hairbrushes; bread bins; household or kitchen utensils and containers namely, [applicant must specify the common commercial name of the goods, i.e. , etc.]; combs and cleaning sponges; beverage glassware; figures of porcelain and earthenware; money boxes; non-electric candelabra; candlesticks

 

International Class 24: Shower curtains; textiles and textile goods namely, [applicant must specify the common commercial name of the goods, i.e. towels, etc.]; bed covers; plastic table covers

 

International Class 25: Clothing namely, [applicant must specify the common commercial name of the goods, i.e. shirts, pants, etc.]; T-shirts, slippers; hats and clothing namely, [applicant must specify the common commercial name of the goods, i.e. shirts, pants, etc.]; footwear; socks; headwear; ponchos; clothing, namely hand-warmers (clothing)

 

International Class 28: Toys, games and playthings namely, [applicant must specify the common commercial name of the goods, i.e. bath toys, board games, etc.]; gymnastic and sporting articles namely, [applicant must specify the common commercial name of the goods, i.e. baseballs, etc.]; puzzles; playing cards; football games, namely, [applicant must specify the common commercial name of the goods because “football game” appears to be an entertainment service in class 41]; apparatus for electronic games adapted for use with an external display screen or monitor; board games for playing quizzes; stuffed and plush toys; decorations for Christmas trees

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

 

 

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.

 

 

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 44:

 

(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 17 classes; however, applicant submitted a fee(s) sufficient for only 11 classes.  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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

 

GENERAL INFORMATION :

 

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.

 

 

 

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

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@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 March 24, 2021 for

U.S. Trademark Application Serial No. 90259834

 

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. 

 

 

/Won T. Oh/

Attorney Advisor

Law Office 114

(571) 272-9204

email: won.oh@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 March 24, 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.”