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 21, 2021

 

The referenced application and preliminary amendment have 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.

 

Trademark Act Section 2(d) Search Results – No Conflicting Marks Found

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, the applicant must address the following substantive/procedural issues:

 

Summary of Issues

• Amended Identification of Goods Required
• Disclaimer Statement Required
• Section 44(d) Sole Filing Basis With No Intent to Perfect

 

Amended Identification of Goods Required

The identification of goods must be clarified because many of the goods are indefinite and/or broad, and therefore, do not clearly and specifically indicate the nature of goods for which registration is sought.  Therefore, applicant must amend the referenced wording below in accordance with the bolded guidance provided.  Please note that, in some instances, examining attorney has replaced any unacceptable wording with acceptable wording. 

 

Applicant may substitute the following wording, if accurate:  (bold indicates modified language)

 

• International Class 034: Wired oral vaporizers for smoking electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, namely, cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kreteks being cigarettes; tobacco powder, namely, snus; tobacco substitutes not for medical purposes; smokers' articles, namely, cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, tobacco pipes, pocket apparatus for rolling cigarettes, lighters for smokers; matches; tobacco sticks, namely, cigarettes; tobacco products for the purpose of being heated, namely, _____ {specify, e.g., rolling tobacco and leaf tobacco}; electronic devices and their structural parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, namely, _____ {specify, e.g., oral vaporizers for smokers}; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices, namely, _____ {specify, e.g., electronic cigarettes, oral vaporizers for smokers}; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol, namely, ____ {specify, e.g., electronic cigarettes, oral vaporizers for smokers}; oral vaporising devices for smokers, for smoking tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes, namely, _____ {specify, e.g., smoker’s mouthpieces for electronic cigarettes}; replacement and structural parts and fittings for the aforesaid products; smoker’s articles, namely,  devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks in the nature of ashtrays; cases for electronic cigarettes also containing a rechargeable power supply

 

 

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.

 

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).  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).

 

Disclaimer Statement Required

Applicant must disclaim the wording “INDUCTION SYSTEM” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary definitions from Merriam-Webster defines INDUCTION as “the production of an electrical or magnetic effect through the influence of a nearby magnet, electrical current, or electrically charged body” and SYSTEM as “an organized or established procedure.” When used together, the combined wording INDUCTION SYSTEM refers to an organized or established procedure for producing an electrical or magnetic effect. Applicant’s various electronic smoking products may operate by using a specific procedure to create an electrical current, or to activate the electrical components of the goods. Therefore, the wording INDUCTION SYSTEM merely describes a feature or characteristic of the goods, namely, they operate via a specific procedure for activating the electrical components, or an INDUCTION SYSTEM.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “INDUCTION SYSTEM” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Section 44(d) Sole Filing Basis With No Intent to Perfect

The application specifies Trademark Act Section 44(d) as the sole filing basis, but indicates that applicant does not intend to rely on Section 44(e) as a basis for registration.  See 15 U.S.C. §1126(d), (e).  Applicant is advised that, while Section 44(d) provides a basis for receipt of a priority filing date, it does not provide a basis for publication or registration, which is required for an application.  15 U.S.C. §1126(d); TMEP §1003.03. 

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)        If applicant intends to rely on Section 44(e) as a basis for registration, and applicant’s statement in the application that he or she does not intend to rely on a Section 44(e) basis was inadvertently submitted, then applicant should so specify.  In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016.  A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration is not yet available, applicant should respond to this Office action to indicate that the foreign application is still pending and request suspension of the U.S. application until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

(2)        If applicant does not intend to rely on Section 44(e) as a basis for registration, applicant must establish a basis for registration under Section 1(a) or basis for publication under Section 1(b) by satisfying the relevant requirements.  37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03; see 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).  Please note that applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

Response Guidelines

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.    

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 21, 2021 for

U.S. Trademark Application Serial No. 90271949

 

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. 

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 21, 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.”