UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/370553

 

The examining attorney has carefully reviewed the applicant’s response to the previous Office action containing amendments and arguments in favor of registration.  The examining attorney has determined the following.

 

Requirement of Amended Identification Maintained

 

As stated in the previous Office action, some of the wording used as the identification of goods is unacceptable and is too broad.  The wording used as the identification of goods is too broad because it could include different types of goods that are classified in different International Classes.  Further, wording such as “sportswear for teams” and “fitness apparatus” is unacceptable as indefinite.  The requirement of a clarified identification of goods is maintained and made FINAL. 

 

The applicant may amend the wording to:

 

Goggles for swimming in Class 9.

-and/or-

Sportswear for teams, namely, jogging suits, t-shirts, sweatshirts, jerseys, tights, shorts, socks, sports underwear, jackets, rainwear, swim wear, tennis shorts, tennis dresses, tennis skirts, golf shirts, sweaters, pullovers, warm-up suits, ski suits, jump suits, fleece shirts and sports gloves; sports shoes, namely, soccer shoes, hiking shoes, track and field training shoes, running shoes, indoor shoes, basketball shoes, tennis shoes and slippers; headgear, namely, caps, helmets, swimming caps and headbands in Class 25.

-and/or-

Sporting articles, namely, sports balls of all types, weights for exercise and for lifting, weight lifting belts, fitness apparatus, namely, _____ (indicate specific items, e.g. leg weights), safety protective padding and guards for _____(indicate sport), body protectors of all types for the practice of sports, golf bags, head covers for golf clubs, golf tees and ball markers, hockey sticks, baseball and softball bats, mitts and gloves for the practice of sports, namely, _____ (indicate specific items, e.g. baseball, golf), ice skates, tennis rackets, squash rackets and badminton rackets in Class 28.

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.  For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, (if the applicant elects to adopt the above identification, this issue may be resolved by telephone) or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

Trademark Office Relocation/Change In USPTO Trademark Contact Information

 

USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004.  During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .

 

Effective October 4, 2004, all Trademark-related paper mail must be sent to:

 

                        Commissioner for Trademarks

                        P.O. Box 1451

                        Alexandria, VA  22313-1451

 

The undersigned examining attorney’s Law Office will move on  November 2, 2004.  To reach the undersigned examining attorney by phone after that date call (571) 272-9353. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9108.

 

If the applicant has any questions or needs assistance in responding to this office action, please telephone the assigned examining attorney.

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(703) 308-9108 Ext. 247

(703) 746-8108 (Fax)

(703) 305-8747 (Status)

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.