Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

 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 14, 2022

 

 

Upon further review the examining attorney has determined the following:

 

Identification of Goods

The identification for “kits” in International Class 5 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of component goods that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to specify, e.g., list the components, reorder the components, clarify the product being made, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instruction manuals” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instruction manuals” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  See id.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are in International Class 33 (the class for “wine”).

 

Kit components must include only goods, not services.  TMEP §1401.05(a).  For example, if computer software is listed as a component of a kit, the identification must indicate that the computer software is recorded or downloadable in International Class 9 and does not include the services of providing temporary use of online non-downloadable software in International Class 41 or 42.  See id.  An identification for a kit including software also must specify the function and any field of use of the software.  See id.

 

Open-ended wording, such as “kits comprised of one or more of the following,” is unacceptable and should not be included in the identification.  Id.  Identifications must be clear and specific to enable proper classification of the goods and to facilitate determination of likelihood of confusion under 15 U.S.C. §1052(d).  See TMEP §1402.03(a).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual.

 

Applicant may adopt the following if accurate:

 

International Class 5:  Medical diagnostic test kits in the form of test cartridges and solutions for screening, diagnosis, monitoring, and surveillance of parasites    

 

If the applicant has any questions or needs assistance in responding to this Office action, please email the assigned examining attorney or call 571-272-9281.

 

 

How to respond.      

 

 

/tmm/

Theodore McBride

Law Office 103

theodore.mcbride1@uspto.gov

phone: 571-272-9281

 

 

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 14, 2022 for

U.S. Trademark Application Serial No. 90407030

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.