United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
| U.S. Application Serial No. 79301088 Mark: WELCARE | |
| Correspondence Address: | |
| Applicant: VALVET KCARE | |
| Reference/Docket No. N/A Correspondence Email Address: | |
NONFINAL OFFICE ACTION
International Registration No. 1567817
Notice of Provisional Full Refusal
DEADLINE FOR RESPONDING: The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
DISCUSSION OF PROVISIONAL FULL REFUSAL: This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
INTRODUCTION
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02. However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark. See additional information below.
SUMMARY OF ISSUES
PRIOR-FILED APPLICATION ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS REQUIREMENT
The identification of goods in both classes is indefinite and must be clarified because the nature and purpose of the goods are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 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. See additional guidance highlighted below.
Applicant may adopt the following identification, if accurate (changes highlighted):
INTERNATIONAL CLASS 005: Diapers for dogs; repellents for dogs; preparations of pharmaceutical trace elements for animal use for the treatment of {specify ailment to be treated, e.g., arthritis, asthma, etc.}; dietary supplements for animals; pharmaceutical preparations for animals for the treatment of {specify ailment to be treated, e.g., arthritis, asthma, etc.}; pharmaceutical preparations for animal skincare; lotions for pets for veterinary purposes; feed supplements for pets for veterinary purposes; nutritional supplements for pets for veterinary purposes; enzymes for veterinary purposes; cleaning preparations for dogs in the nature of insecticides; dietary supplements for pets in the nature of a powdered drink mix; vitamin and mineral supplements for pets; dietary supplements for pets
INTERNATIONAL CLASS 031: Strengthening animal forage, namely, foodstuffs for animals also containing strengthening supplements; digestible chewing bones for dogs and cats; litter for cats comprised of sand; animal foodstuffs; foodstuffs for animals; animal feed formula; foodstuffs, namely, animal feed also containing nutritional supplements for non-medical purposes; foodstuffs, namely, animal feed also containing nutritional additives for non-medical purposes; fodder; formula animal feed for dogs; pet feed; snacks for pets; litter for pets; beverages for pets; edible pet treats; synthetic animal feed; mixed animal feed
Applicant may amend the identification 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). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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.
TRANSLATION AND TRANSLITERATION REQUIREMENT
If the transliterated wording has an English translation, applicant should use the following format, if accurate:
The non-Latin characters in the mark transliterate to “{specify non-English transliteration}” and this means “WELL CARE” in English.
TMEP §809.03.
DISCLAIMER REQUIREMENT
The attached dictionary evidence shows this word means “[a]ttentive assistance or treatment to those in need.” Thus, the wording merely describes applicant’s goods because the purpose of the goods is to CARE for animals and pets.
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213. If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use the non-Latin characters that transliterate to “CARE” 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.
DESCRIPTION OF THE MARK REQUIREMENT
The following description is suggested, if accurate:
The mark consists of the word “WELCARE” in stylized font above three Korean characters positioned horizontally.
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.
EMAIL ADDRESS REQUIREMENT: Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
APPLICANT MUST BE REPRESENTED BY A U.S.-LICENSED ATTORNEY TO RESPOND TO OR APPEAL THE PROVISIONAL REFUSAL: An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented 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), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application.
TO APPOINT OR DESIGNATE A U.S.-LICENSED ATTORNEY: To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ 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).
ASSISTANCE
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 requirements 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.
/Hudson, Tamara/
Examining Attorney
Law Office 104
571.272.2575
tamara.hudson@uspto.gov
PROCEDURAL INFORMATION FOR RESPONSES