Offc Action Outgoing

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  76/442970

 

This letter responds to the applicant’s communication filed on March 17, 2003.

 

The applicant’s disclaimer is acceptable and has been made of record.  However, the applicant’s claim of ownership of Reg. No. 2180156 is not substantiated by the Office’s assignment database (see attached).  The applicant should remedy this, and also submit the following statement:

The applicant is the owner of U.S. Reg. No. 2180156.

 

Part I:  Identification/Classification/Fee.

The following is taken verbatim from the final Office Action in the applicant’s Ser. No. 76434830 (to which the applicant responded by adopting the suggestions of the undersigned and paying $335 for an additional class):

 

By Office Action dated December 12, 2002, the examining attorney made the requirement of an acceptable identification of goods and the appropriate fee therefor.

The examining attorney has carefully considered the applicant’s argument but has found the same unpersuasive.  For the reasons provided below, the requirement is [continued, but not made final].

The applicant’s identification of goods, as amended, remains unacceptable because it contains certain misclassified goods.  TMEP §1402.01.  This Office’s “Acceptable Identification of Goods & Services Manual,” accessible at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/manual.html (searchable using Ctrl+F), unambiguously lists both “bicycling gloves” and water-sport gloves* in Class 28.  Thus the applicant’s argument as to the suitability of classifying the disputed goods in Class 25 is a non-starter.

The examining attorney may withdraw the refusal to register based on the applicant’s overbroad identification if the applicant amends the same as follows:

Class 9––safety helmets for use in active sports such as bicycling, motorcycling, snowmobiling, boating, auto racing, skiing, tubing, snowboarding, ice skating, horseback riding; and helmet accessories, namely face shields, visors, removable helmet interiors and fitted helmet bags, all for helmets used in active sports such as bicycling, motorcycling, snowmobiling, boating, auto racing, skiing, tubing, snowboarding, iceskating, horseback riding

Class 25––sports apparel, namely, leather and textile jackets, pants and boots, all for use in active sports such as motorcycling, bicycling, snowmobiling, boating, auto racing, skiing, tubing, snowboarding, ice skating and horseback riding; leather and textile suits for motorcycling, bicycling, snowmobiling, boating, auto racing, skiing, tubing, snowboarding, ice skating, and horseback riding; leather and textile gloves for use in motorcycling, bicycling, snowmobiling, auto racing, skiing, snowboarding, ice skating, boating, tubing and horseback riding

Class 28––leather and textile gloves for use in bicycling, boating, and tubing

The applicant is reminded that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of the goods/services set forth in the present identification.

Also, as previously indicated (see Part 3.b. of previous Office Action), “The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.”  The fee for filing a trademark application is now $335 for each class.

The requirement of an acceptable identification of goods (and fee therefor) is [continued].

 

Part II:  Amendment to Allege Use

The form of the applicant’s AAU is proper, and the submitted material clearly shows use of the mark on Class 9 goods (helmets and accessories therefor).  Use of the mark on Class 25 (and Class 28) goods is less apparent or not demonstrated at all.

The applicant submitted (1) a decal of the mark and (2) a catalog containing many photos of helmets and accessories therefor; either of these would be acceptable to show Class 9 use.  The applicant also included (3) an adhesive-backed note with the words “Class 25,” which was applied to (2) the catalog when the undersigned received it.  The catalog shows only Class 9 items (and one Class 18 item, a bag, which is not the subject of this application); thus the catalog cannot be evidence of Class 25 or Class 28 use.  However, (1) the decal can be evidence as to any class of goods to which it is actually applied.  If the same is applied to the applicant’s Class 25 and Class 28 goods or their packaging, the applicant should so state for the record and this refusal will be withdrawn.

Alternatively, the submitted material is unacceptable because it fails to show use of the mark on the applicant’s Class 25 and Class 28 goods.  The applicant must submit a specimen showing the mark, as used in commerce, on such goods.  37 C.F.R. §§2.56 and 2.76(b)(2).  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  

The applicant must also verify—with a declaration** under 37 C.F.R. §2.20 or affidavit—that the applicant used the substitute specimen(s) in commerce prior to filing the amendment to allege use.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(b)(1).

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with a declaration^** under 37 C.F.R. §2.20 or affidavit.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).

 

•            Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

Notice of Fee Increase:  Effective January 1, 2003, the fee for filing an application for trademark registration will be increased $10.00 to $335.00 per International Class.  The USPTO will not accord a filing date to applications filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

/J. Brendan Regan/

Examining Attorney, Law Office 113

                (703) 308-9113x420 • brendan.regan@uspto.gov