To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`East End Foods PLC (MJSDocket@hbiplaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 88384150 - EAST END - 2427-39
`
`7/1/2019 8:33:50 AM
`
`ECOM121@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88384150*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88384150
`
`           
`
`MARK: EAST END
`
`CORRESPONDENT
`ADDRESS:
`  
`       MATTHEW J.
`SOLOW
`  
`       HOFFMANN &
`BARON, LLP
`         6900 JERICHO
`TURNPIKE
`           SYOSSET, NY
`11791-4407
`    
`   
`APPLICANT: East End
`Foods PLC
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  2427-39
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`MJSDocket@hbiplaw.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 7/1/2019
`
`Introduction
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`Search Results
`
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
` 
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` 
` 
` 
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` 
`

`

`Summary of Issues
`Amended Identification of Goods Required
`Option to Delete Section 1(b) Filing Basis
`
`Amended Identification of Goods Required
`
`Certain wording in the identification of goods is indefinite and must be clarified because applicant must indicate the nature of the goods.  See 37
`C.F.R. §2.32(a)(6); TMEP §1402.01.  Specific issues and suggestions are outlined in the chart below.
`
`The wording “included in this class” and “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,” “such as”) that is not acceptable
`because it fails to identify specific goods.  See TMEP §1402.03(a).  Specific issues and suggestions are outlined in the chart below.
`
`  However, this term is generally not accepted in
`Applicant has included the term “and/or” or “or” in the identification of goods and/or services.
`identifications when it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See
`TMEP §1402.03(a).
`
`An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a
`bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore,
`applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with
`the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
`  Specific issues and suggestions are
`outlined in the chart below.
`
`The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications
`in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods
`and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See
`TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or
`translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification,
`e.g., “fried tofu pieces (abura-age).”   Id.
`
`Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the
`description of the goods and/or services. Specific issues and suggestions are outlined in the chart below.
`
`Specific issues and suggestions are outlined in the chart below:
`
`International Class 029:
`
`Original
`Meat, fish, poultry and game
`
`Issue
`Clarification
`
`  prepared meals in this class
`
`“included in this class” is
`indefinite; clarification
`
`  meat extracts
`
`   food pastes included in this class
`
`  fruits and vegetables, all being
`preserved, frozen, dried or cooked
`
`  chips
`
`  jellies and dairy products
`
`Acceptable
`“included in this class” is
`indefinite; Indefinite,
`applicant must indicate the
`nature of the goods
`“or” is indefinite
`
`Indefinite, applicant must
`indicate the nature of the
`goods
`Indefinite, applicant must
`indicate the nature of the
`dairy products
`
`Suggestion
`Meat, fish, poultry and
`game, not live
`prepared meals consisting
`primarily of meat
`substitutes
`
`food pastes, namely,
`{indicate the nature of the
`goods, e.g., meat paste,
`vegetable paste}
`preserved, frozen, dried
`and cooked fruits and
`vegetables
`{indicate type, e.g.,
`potato} chips
`
`jellies and dairy products,
`namely, {indicate the
`nature of the goods, e.g.,
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`  nuts
`
`  sultanas
`
`Indefinite, applicant must
`indicate the nature of the
`goods
`Clarification
`
`cream}
`{indicate type, e.g.,
`processed} nuts
`
`sultanas being dried
`grapes
`
`  jams, compotes
`
`   eggs, milk
`   edible oils, olive oil, corn oil,
`
`Acceptable
`Acceptable
`Clarification
`
`curry oil, coconut oil, sunflower
`oil, butter ghee, edible fats
`
`  snack foods included in this class
`
`  food preserves
`
`“included in this class” is
`indefinite; Indefinite,
`applicant must indicate the
`nature of the goods
`Indefinite, applicant must
`indicate the nature of the
`goods
`
`  pickles
`
`   margarine
`   butter
`   lentils, beans
`
`Acceptable
`Acceptable
`Acceptable
`Clarification
`
`  pulses, peas, dalls, chick peas,
`bhajis, ackees, callaloo, moong,
`moth beans
`
`Clarification
`
`“and/or” is indefinite;
`delete parentheses
`
`  tomatoes, spinach, spinach puree,
`kidney beans, black eye beans,
`yellow gram (split peas), coco
`beans, okra (fruit), mango,
`pineapple, guava, lychees and
`jackfruit, all being frozen,
`preserved and/or canned
`
`  soups
`
`Acceptable
`
`International Class 030:
`
`edible oils, olive oil for
`food, corn oil for food,
`curry oil for food, coconut
`oil for food, sunflower oil
`for food, butter, ghee,
`edible fats
`{indicate the nature of the
`goods, e.g., meat-based}
`snack foods
`
`food preserves, namely,
`{indicate the nature of the
`goods, e.g., meat
`preserves}
`
`processed lentils,
`processed beans
`processed pulses,
`processed peas, processed
`dalls being beans,
`processed chick peas,
`processed bhajis being
`potato fritters, processed
`ackees, processed callaloo,
`processed moong,
`processed moth beans
`tomatoes, spinach, spinach
`puree, kidney beans, black
`eye beans, yellow gram
`being split peas, coco
`beans, okra being fruit,
`mango, pineapple, guava,
`lychees and jackfruit, all of
`the foregoing foods being
`frozen, preserved and
`canned
`
`Original
`Coffee, tea, cocoa, sugar, rice,
`tapioca
`
`coffee essences and coffee extracts
`
`   mixtures of coffee and chicory,
`   prepared meals in this class
`
`Issue
`Acceptable
`
`Acceptable
`
`“in this class” is
`indefinite; indefinite,
`applicant must indicate the
`nature of the good
`
`Suggestion
`
`{indicate type, e.g.,
`noddle-based} prepared
`meals
`
` 
` 
` 
`

`

`  chicory and chicory mixtures, all
`for use as substitutes for coffee
`
`Acceptable
`
`   flour (including wheat, chapatti,
`
`“including” is indefinite
`
`cornmeal, gram, maizemeal, rice and
`semolina flour)
`
`  preparations made from cereals for
`food for human consumption
`
`Indefinite, applicant must
`indicate the nature of the
`goods
`
`  bread
`
`   biscuits (other than biscuits for
`
`animals), cakes, pastry, non-
`medicated confectionery
`
`Acceptable
`Delete parentheses; 
`Indefinite, applicant must
`indicate the nature of the
`goods
`
`“including” is indefinite
`
`  food pastes including curried food
`pastes
`  ices, honey, treacle
`
`  baking powder, mustard, pepper,
`vinegar, sauces, marinades, salad
`dressings, spices
`
`white and brown rice)
`
`   ice
`   yeast and salt, all for food
`   rice (including long grain, basmati,
`
`Acceptable
`Acceptable
`Clarification
`Acceptable
`
`“including” is indefinite;
`delete parentheses
`
`  naan bread
`
`   chapatti
`   preparations (in sachet form) for
`
`making sauces or pastes
`  cakes
`
`  chocolate
`
`   puddings
`   pasta
`   desserts
`   pesto
`   pasta sauces
`   chutney
`   condiments
`
`Acceptable
`Acceptable
`Clarification; delete
`parentheses
`Acceptable
`Acceptable
`Acceptable
`Clarification
`Acceptable
`Acceptable
`Acceptable
`Acceptable
`Indefinite, applicant must
`indicate the nature of the
`goods
`Acceptable
`Clarification
`
`  pickled ginger
`
`   food flavourings and seasonings
`
`  relishes
`
`   peppercorns
`
`Acceptable
`Clarification
`
`  rubs for food
`  herbs
`  fruit sauces
`
`snacks included in this class
`
`   prepared foods, ingredients and
`
`Clarification
`Clarification
`Acceptable
`“included in this class” is
`indefinite; applicant must
`indicate the nature of the
`goods
`
`wheat flour, chapatti
`flour, cornmeal, gram
`flour, maize meal, rice and
`processed semolina flour
`preparations made from
`cereals, namely, {indicate
`the specific items} for
`human consumption
`
`biscuits other than biscuits
`for animals, cakes, pastry,
`non-medicated
`confectionery, namely,
`{indicate the nature of
`the goods, e.g., fondants}
`food pastes, namely,
`curried food pastes
`
`yeast and salt for food
`
`rice, namely, long grain,
`basmati, white and brown
`rice
`
`ready made sauces and
`pastes in sachet form
`
`bakery desserts
`
`condiments, namely,
`{indicate the nature of
`the goods, e.g., chutneys}
`
`food flavourings other
`than essential oils and
`seasonings
`
`processed olives for
`peppercorns
`spice rubs for food
`processed herbs
`
`prepared foods,
`ingredients and snacks,
`namely, {indicate the
`nature of the goods, e.g.,
`prepared pasta,
`
`

`

`  food preparations made from the
`aforesaid goods
`
`Indefinite, applicant must
`indicate the nature of the
`goods
`
`prepared wasabi}
`food preparations made
`from the aforesaid goods,
`namely, {indicate the
`nature of the goods, e.g.,
`pizza}
`
`Applicant may adopt the following identification of goods, if accurate:
`
`International Class 029: Meat, fish, poultry and game, not live; prepared meals consisting primarily of meat substitutes; meat extracts; food
`pastes, namely, {indicate the nature of the goods, e.g., meat paste, vegetable paste}; preserved, frozen, dried and cooked fruits and
`vegetables; {indicate type, e.g., potato} chips; jellies and dairy products, namely, {indicate the nature of the goods, e.g., cream}; {indicate
`type, e.g., processed} nuts; sultanas being dried grapes; jams, compotes; eggs, milk; edible oils, olive oil for food, corn oil for food, curry oil
`for food, coconut oil for food, sunflower oil for food, butter, ghee, edible fats; {indicate the nature of the goods, e.g., meat-based} snack
`foods; food preserves, namely, {indicate the nature of the goods, e.g., meat preserves}; pickles; margarine; butter; processed lentils,
`processed beans; processed pulses, processed peas, processed dalls being beans, processed chick peas, processed bhajis being potato
`fritters, processed ackees, processed callaloo, processed moong, processed moth beans; tomatoes, spinach, spinach puree, kidney beans, black
`eye beans, yellow gram being split peas, coco beans, okra being fruit, mango, pineapple, guava, lychees and jackfruit, all of the foregoing foods
`being frozen, preserved and canned; soups
`
`International Class 030: Coffee, tea, cocoa, sugar, rice, tapioca; mixtures of coffee and chicory, coffee essences and coffee extracts; {indicate
`type, e.g., noddle-based} prepared meals; chicory and chicory mixtures, all for use as substitutes for coffee; wheat flour, chapatti flour,
`cornmeal, gram flour, maize meal, rice and processed semolina flour; preparations made from cereals, namely, {indicate the specific items} for
`human consumption; bread; biscuits other than biscuits for animals, cakes, pastry, non-medicated confectionery, namely, {indicate the nature of
`the goods, e.g., fondants}; food pastes, namely, curried food pastes; ices, honey, treacle; ice; yeast and salt for food; baking powder, mustard,
`pepper, vinegar, sauces, marinades, salad dressings, spices; rice, namely, long grain, basmati, white and brown rice; naan bread; chapatti; ready
`made sauces and pastes in sachet form; cakes; puddings; pasta; bakery desserts; chocolate; pesto; pasta sauces; chutney; condiments, namely,
`{indicate the nature of the goods, e.g., chutneys}; pickled ginger; food flavourings other than essential oils and seasonings; relishes;
`processed olives for peppercorns; spice rubs for food; processed herbs; fruit sauces; prepared foods, ingredients and snacks, namely, {indicate
`the nature of the goods, e.g., prepared pasta, prepared wasabi}; food preparations made from the aforesaid goods, namely, {indicate the
`nature of the goods, e.g., pizza}
`
`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).  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 and/or services 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 and/or services 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.
`
`Applicant must also address the following requirement.
`
`Option to Delete Section 1(b) Filing Basis
`
`The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section
`44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a
`U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e)
`
`as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  
`
`Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark
`may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on
`Section 1(b).
`
`Response to Office Action
`
`Please 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 refusal(s) and/or requirement(s) 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.  
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.     
`
`/Jessie A. Maihos/
`Examining Attorney
`Law Office 121
`(571) 270-3545
`jessie.maihos@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
` 
` 
` 
`  
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`East End Foods PLC (MJSDocket@hbiplaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 88384150 - EAST END - 2427-39
`
`7/1/2019 8:33:51 AM
`
`ECOM121@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 7/1/2019 FOR U.S. APPLICATION SERIAL NO. 88384150
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 7/1/2019 (or sooner if specified in the Office action).  A response
`transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
`response period.   For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
`
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`