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  76/437037

 

This letter responds to the applicant's communication filed on April 29, 2003 wherein the applicant argued against the Section 2(d) refusals and amended the identification of goods. 

 

The 2(d) refusal to Registration No. 2072208 is WITHDRAWN. However, the examining attorney has considered the applicant’s arguments carefully regarding Reg. No. 2066456 but found them unpersuasive, therefore, the refusal based on this registration  is maintained.

 

A copy of Prior Pending Application Serial No. 76/032709 was included but was not referenced in the office action. Therefore, the prior pending application is referenced below. 

 

The amendment to the identification of goods is unacceptable for the reason below. Therefore, this requirement is maintained.

 

Pending Application – Possible 2(D) Refusals-Continued

 

Please Note:  The examining attorney enclosed information regarding pending Application Serial No. 76032709 in the first office action.  37 C.F.R. Section 2.83.  There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application proceeds the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Identification of Goods-Continued

 

The wording "Clothing;" in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804. The applicant may amend this wording to "Clothing, namely, [SPECIFY e.g. pants, shirts, t-shirts, sweatshirts, shorts, etc.]", if accurate.  TMEP section 804.

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

            Clothing, namely, shirts, t-shirts, golf shirts, polo shirts, dress shirts, jackets, and sweatshirts; footwear; headwear, in Class 25.  TMEP section 804.

 

Please note that, 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 goods set forth in the present identification.

 

Applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/  to ensure the appropriate specificity of goods and services.

 

If further information or assistance is needed in responding to this Office Action, please feel free to contact the trademark attorney listed below.

 

 

/Shari L. Sheffield/

Shari Sheffield

Trademark Attorney

Law Office 110

703-308-9110 ext. 467

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.