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:  April 28, 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, 2.65(a); TMEP §§711, 718.03.

 

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 ISSUE(S)

• Identification of goods and/or services requirement

 

PROCEDURAL ISSUE(S)

 

Identification of Goods and/or Services Requirement

 

International Class 030: Applicant has identified the goods and/or services as “Food flavorings, other than essential oils; Supplies for bakers, confectioners, ice cream manufacturers and the food trade in general-namely, food flavoring extracts, emulsions and concentrates not from essential oils; non-dairy based premixed powders-namely, whipped powders used in the preparation of meringue, cream puff filling powders, marshmallow powders and icing powders; prepared icings; non-dairy based frappe powder, icing-powder, marshmallow icing, whip-powder, foam-powder, flavoring extract, jelly-powder, dry pie-filling, dipping-cream for candies, and syrup-like preparation for making of candies; pastry toppings and cream roll fillings; Coffee; tea; cocoa; coffee substitutes, namely, artificial coffee or vegetable preparations for use as coffee; sugar; rice; tapioca; sago; flour; processed cereals; bread; pastries; confectionery, namely, candy; edible ices; honey; bulgur; cornmeal; treacle; yeast; baking powder; salt; mustard; vinegar; sauces; spices; Aroma chemicals, not being essential oils, for use as flavoring in food and beverage.”

 

The wording “non-dairy based premixed powders-namely, whipped powders used in the preparation of meringue, cream puff filling powders, marshmallow powders and icing powders” and “whip-powder, foam-powder, flavoring extract, jelly-powder, dry pie-filling, dipping-cream for candies, and syrup-like preparation for making of candies; pastry toppings and cream roll fillings” in the identification of goods for International Class 030 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant may adopt the following identification, if accurate: 

 

·       Class 029: Non-dairy based premixed powders-namely, whipped cream in powder form used in the preparation of meringue, cream puff filling powders in the nature of non-dairy based mixed for making whipped toppings}; Whipped topping in powder form; Fruit jellies in powdered form; Fruit-based dry filling for pies; Coconut cream for dipping candies; pastry toppings and cream roll fillings, namely, {specify type, e.g., fruit topping and fruit jellies, etc.}

·       Class 030:  Food flavorings, other than essential oils; Supplies for bakers, confectioners, ice cream manufacturers and the food trade in general-namely, food flavoring extracts, emulsions and concentrates not from essential oils; non-dairy based premixed powders-namely, marshmallows in powders and icing in powder form; prepared icings; non-dairy based frappe powder, icing-powder, marshmallow icing, foam-powder in the nature of {specify type by common commercial name in Class 030}, food flavoring extract, royal jelly in powder form, chocolate-based dry pie-filling, dipping-cream for candies in the nature of {specify type, e.g., chocolate sauce, etc.}, and syrup-like preparation in the nature of {specify type, e.g., chocolate syrup, corn syrup, etc.} for making of candies; pastry toppings and cream roll fillings, namely, {specify type, e.g., pastry cream, Bavarian cream, etc.}; Coffee; tea; cocoa; coffee substitutes, namely, artificial coffee or vegetable preparations for use as coffee; sugar; rice; tapioca; sago; flour; processed cereals; bread; pastries; confectionery, namely, candy; edible ices; honey; bulgur; cornmeal; treacle; yeast; baking powder; salt; mustard; vinegar; sauces; spices; Aroma chemicals, not being essential oils, for use as flavoring in food and beverage

 

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’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or encompassed by those in the original 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).

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 029.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Multiple Class Requirements

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)       DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)       SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)       STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class(es) 030 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

RESPONSE GUIDELINES

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

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.    

 

 

/mvaghani/

Mayur Vaghani

Trademark Examining Attorney

Law Office 124

Phone: (571) 272-1615

mayur.vaghani@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 April 28, 2021 for

U.S. Trademark Application Serial No. 90325177

 

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. 

 

 

/mvaghani/

Mayur Vaghani

Trademark Examining Attorney

Law Office 124

Phone: (571) 272-1615

mayur.vaghani@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 April 28, 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.”