Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  June 04, 2021

 

 

This letter responds to applicant’s communication filed on May 13, 2021.  The examining attorney acknowledges and has entered into the record applicant’s identification of goods for classes 3, 9 and the additional fees for the added international class. Applicant’s amended identification of goods for classes 8,   remains unacceptable as indefinite and the requirement for an acceptable specimen is herein made FINAL.

 

IDENTIFICATION OF GOODS AND SERVICES:

 

The identification of goods is indefinite and must be clarified because certain wording is overly broad and also potentially misclassified.  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 [acceptable as is]

 

International Class 6: accessories for mobile telephones, namely, metal clips for organizing of electric charging cables to prevent tangling

 

International Class 8: Penknives; hand tools and implements, namely, multi-tools multi-function hand tools comprised primarily of pocket knives and also including {specify hand tool components, e.g., screwdrivers, files, etc.}, bottle openers [this item is properly classified in class 21], manually operated screwdrivers, hammers, spanners, and wrenches; table cutlery; non-electric shavers, razors; non-electric pizza cutters; cake cutters; hand operated scrapers for removing ice from vehicle windows

 

International Class 9: 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, cases for mobile phones, accessories for mobile telephones, namely, devices for organizing of electric charging cables to prevent tangling [this wording is indefinite and appears to refer to goods properly classified in class 6 or 20], and stands for personal digital electronic devices, namely, mobile phones; camera lenses; fridge magnets; decorative magnets; laptop bags adapted for laptops

 

International Class 11: Electric torches for lighting, namely, flashlights, LED flashlights, portable reading lights; apparatus for lighting, heating, cooking and ventilating and for sanitary purposes, namely, desk lamps, electric lamps, reading lights, LED mood lights, decorative lighting in the nature of electrically-illuminated figurines, electric night lights, outdoor portable lighting products, namely, headlamps; electric candelabras; electric pocket warmers for warming hands; non-electric pocket warmers, namely, chemically-activated heating packets for warming hands not for medical purposes [acceptable as amended]

 

 

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

 

Particular wording “arts and crafts kits for making bracelets” in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

Applicant is also advised that “arts and crafts kits for making bracelets” is not supported by the foreign registration.

 

 

 

International Class 16: Paper, cardboard; pens; toilet paper; rubber stamps, stickers; printed posters; adhesive tape for stationery purposes; printed books, namely, paper notebooks, blank writing journals, personalized writing journals, printed diaries; printed matter, namely, printed desk top planners, printed calendars, printed Advent calendars, stationery; printed notebooks; sticky notes; paper staplers; paper clips; pencil and pen toppers namely, decorative pencil-top and pen-top ornaments; desk tidies; printed charts for displaying a ruler for measuring a person's height; sticky tape namely, adhesive tapes for stationery or household purposes; decorative sticky tape, namely, adhesive tapes for stationery or household purposes; passport covers; arts and crafts paint kits; arts and crafts clay kits; arts and crafts origami kits comprising origami paper and printed origami instructional manuals; arts and crafts kits for crafting dream catchers; arts and crafts kits for making snow globes

 

Particular wording “pen toppers” and “arts and crafts paint kits; arts and crafts clay kits; arts and crafts origami kits comprising origami paper and printed origami instructional manuals; arts and crafts kits for crafting dream catchers; arts and crafts kits for making snow globes” in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

Applicant is also advised that “pen toppers” and “arts and crafts paint kits; arts and crafts clay kits; arts and crafts origami kits comprising origami paper and printed origami instructional manuals; arts and crafts kits for crafting dream catchers; arts and crafts kits for making snow globes” are not supported by the foreign registration.

 

International Class 18: Luggage tags; business card cases; leather and imitations of leather; trunks being luggage and travelling bags; bags, namely, backpacks, shoulder bags, textile shopping bags, wash bags sold empty for carrying toiletries, makeup bags sold empty; purses; umbrellas; luggage tags [acceptable as amended]

 

International Class 20: Mirrors; picture frames; furniture; bins, not of metal; key caps, namely, plastic or rubber caps used to cover the tops of keys; accessories for mobile telephones, namely, clips, not of metal, for organizing of electric charging cables to prevent tangling

 

International Class 21: Kitchenware namely, dinnerware, namely, plates and bowls, bowls, chopping boards for kitchen use, spatulas for kitchen use, beverage stirrers, water bottles sold empty, travel mugs; drinking vessels; drinking glasses, mugs, cups; hip flasks; salt and pepper pots; bottle openers; corkscrews; vacuum bottle stoppers; egg cups; toast stamps namely, stamp for imprinting toast with a design; saucepans; frying pans; washing-up brushes; drinking straws; spaghetti measurers; cake moulds; ice cream scoops; ice cube trays; cocktail shakers; hairbrushes; trash cans; household or kitchen utensils and containers namely, sandwich bags, sandwich boxes, decorative plates, decorative bowls; combs and cleaning sponges; beverage glassware; goods of porcelain and earthenware, namely, plates, bowls, mugs, figurines, jars, tankards, candle holders, and storage and decorative storage centerpieces; money boxes; non-electric candelabra; candlesticks; bottle openers

 

Particular wording “sandwich bags” in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  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.  Specifically, “sandwich bags” are not a household utensil or container. Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

Applicant is also advised that “sandwich bags” is not supported by the foreign registration.

 

 

International Class 24: Shower curtains; textiles and textile goods namely, towels, table cloths of textile, face cloths, turban towels for drying hair, picnic blankets; bed covers; plastic table covers [acceptable as amended]

 

International Class 25: T-shirts, slippers; Clothing and hats namely, aprons, hoodies clothing, ponchos; footwear; socks; headwear; ponchos; non-medical fabric knit face masks being headwear

 

International Class 28: Toys, games and playthings namely, playing cards and card games, dice games, board games, stress relief exercise balls, dominoes, modeled plastic toy figurines, balls for juggling, remote control toys, namely cars and flying objects, bath games, bath toys, construction toys, toy building blocks, game apparatus, namely, bats, and balls for playing indoor and outdoor games, air hockey tables, foosball tables, jigsaw puzzles; gymnastic and sporting articles namely, soccer balls, ping pong table tennis balls, skipping ropes, table tennis sets including balls, paddles, nets, and tables; puzzles; playing cards; football games, namely, foosball tables; apparatus for electronic games adapted for use with an external display screen or monitor; apparatus for electronic games other than those adapted for use with an external display screen or monitor; board games for playing quizzes; stuffed and plush toys; decorations for Christmas trees; toy face masks

 

The wording “ping pong” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No. 0294408. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace such wording with the following, if appropriate:  “table tennis balls.”

 

 

 

 

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 13 classes; however, applicant submitted a fee(s) sufficient for only 12 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.

 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 June 04, 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 June 04, 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.”