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:  May 15, 2022

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods
• Domicile Address Required
• Mark Description

 

 

Search Results

 

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.

 

 

 

IDENTIFICATION OF GOODS

 

The wording “plant based nutraceuticals, . . . minerals, including menthol, . . . amphor and eucalyptus” in the identification of goods is indefinite and must be clarified because the nature and/or purpose of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including” and “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 5:              Aerosol dispensers for medical use sold filled with herbal supplements, plant based nutraceuticals for use as a dietary supplement, vitamins and minerals mineral supplements, including menthol for pharmaceutical purposes, lidocaine, camphor for medical purposes and eucalyptus for pharmaceutical purposes; Anti-inflammatory sprays; Dietary supplements for human beings and animals; Dietary supplements for humans and animals; Dietary and nutritional supplements for sleep, altitude sickness, energy, mood, pain relief, anxiety and weight loss; Herbal supplements; Herbal supplements for sleeping problems; Herbal supplements for sleep, altitude sickness, energy, mood, pain relief, anxiety and weight loss; Mineral supplements; Nutraceuticals for use as a dietary supplement; Nutritional supplements; Sexual stimulant sprays; Therapeutic spray to soothe and relax the muscles; Vitamin supplements

 

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).

 

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.

 

 

 

Domicile address required

 

Applicant must clarify its domicile street address because the domicile address of record is for a third-party commercial mail receiving agency and does not appear to be applicant’s permanent legal place of residence or principal place of business.  See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1).  A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a). 

 

Applications must include an applicant’s domicile address because such domicile determines whether an applicant is required to have a U.S.-licensed attorney represent it before the USPTO.  See 37 C.F.R. §§2.11(a), 2.32(a)(2); TMEP §§601, 803.05.  An applicant whose domicile is located outside of the United States or its territories must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §2.11(a); TMEP §601.01(a).

 

In this case, the application lists applicant as a juristic entity and specifies applicant’s domicile address as follows:  PMB# 236 - 6140 S. Gun Club Rd. Suite K6, Aurora, Colorado.  The attached evidence shows this address is a commercial mail receiving agency and thus does not appear to be applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).  A commercial mail receiving agency is a private business that accepts mail from the U.S. Postal Service on behalf of third parties.

 

Response options.  Applicant must provide its domicile street address.  See 37 C.F.R. §§2.32(a)(2), 2.189; TMEP §803.05.  Alternatively, applicant may provide documentation showing that the listed U.S. domicile address is, in fact, applicant’s domicile.  TMEP §§601.01(b)-(b)(1), 803.05; see 37 C.F.R. §2.11(b). 

 

If applicant amends the application to list a domicile street address located outside of the United States or its territories, applicant must appoint a U.S.-licensed attorney qualified under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See 37 C.F.R. §2.11(a); TMEP §601.01(a).  See Hiring a U.S.-licensed trademark attorney for more information.  However, if applicant establishes its domicile street address is located within the United States or its territories, applicant is not required to appoint a qualified U.S.-licensed attorney.  See TMEP §601.01(b).

 

To provide applicant’s domicile street address.  After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address.  Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field.  However, any street address listed in the “Mailing Address” field will be publicly viewable.

 

To provide documentation to support a U.S. domicile address.  Applicant should provide the most recent documentation showing that the address is the applicant’s business headquarters, for example one of the following:  (1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency.  TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b).  Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information. 

 

To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed TEAS Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.

 

 

 

MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Specifically, applicant must account for the color white appearing in the drawing. Further, applicant must remove “Plate Gothic” from the description because this appears to be a proprietary term.

 

The following description is suggested, if accurate: 

 

The mark consists of a copper circle and stylized, graphically depicted praying mantis with a gradation of copper colors from Pantone 722C to Pantone 725 C. The word MANTIS depicted in copper font, and a copper color and a gradation of copper colors from Pantone 722C to Pantone 725 is placed under the circle and stylized praying mantis graphic. The color white represents background and is not a feature of the mark.

 

 

 

Responding to this Office action

 

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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 May 15, 2022 for

U.S. Trademark Application Serial No. 90872993

 

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.  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 trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         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 is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.