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:  June 17, 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.

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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:

 

• Identification of Goods Requirement
• Multiple-Class Application Requirements

 

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The wording “paper face masks” in the identification of goods is unacceptable as indefinite and must be clarified.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.   Additionally, applicant’s identification of goods need clarification because they are too broad and could include goods and/or services classified in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

As of June 11, 2020, the wording “paper face masks” was deleted in compliance with the Eleventh Edition, version 2020, of the Nice Agreement (“Nice 11-2020”) because it is indefinite and overbroad. As worded, the nature of the goods is unclear and could include goods in more than one class. This wording is no longer acceptable. This entry was replaced by "Paper face masks being playthings" and "Face masks being playthings" in Class 28. The wording as provided could include for example "paper sanitary masks for protection against viral infection" in Class 10. 

 

Applicant may adopt the following wording, if accurate (suggestions in bold):

 

Class 010:      Paper sanitary masks for protection against viral infection

 

Class 028:       Toys and sporting goods, namely, games and playthings, namely, action figures and accessories therefor; playsets for action figures; toy furniture; plush toys; balloons; bathtub toys; ride-on toys; playing cards and card games; toy vehicles; dolls; bobble head dolls; flying discs; electronic hand-held game unit; game equipment sold as a unit for playing a board game, a card game, a manipulative game, a parlor game and an action type target game, namely, game consoles, cards, tokens, boards and targets; stand-alone video output game machines; slot machines; gaming equipment, namely, slot machines with or without video output; gaming machines, namely, devices which accept a wager; reconfigurable casino and lottery gaming equipment, namely, gaming machines sold with inbuilt operational computer games software; jigsaw and manipulative puzzles; paper face masks being playthings; skateboards; ice skates; water squirting toys; balls, namely, playground balls, soccer balls, baseballs, basketballs; baseball gloves; swimming floats for recreational use; kickboard flotation devices for recreational use; surfboards; swim boards for recreational use; swim fins; toy bakeware and toy cookware; play wands; toy construction sets; toy snow globes; paper party hats; Christmas tree ornaments; game equipment for playing parlor-type computer game, namely, computer gaming consoles for recreational game playing, computer game joysticks, game controllers for computer games, battery-powered computer games with LCD screen; fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles, hand-held video game units; paper party favors; Halloween masks

 

For assistance with identifying and classifying goods 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 identifications above 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).

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that may be in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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.

 

The fee for adding classes to a TEAS Plus application is $250 per class.  See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

RESPONSE GUIDELINES

 

Applicant may call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be 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.    

 

 

/Michael J. Clark/

Trademark Examining Attorney

Law Office 121

(571) 272-4967

michael.clark1@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 17, 2021 for

U.S. Trademark Application Serial No. 90387604

 

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. 

 

 

/Michael J. Clark/

Trademark Examining Attorney

Law Office 121

(571) 272-4967

michael.clark1@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 17, 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.”