UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/488349
APPLICANT: Southwest Recreational Industries, Inc.
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CORRESPONDENT ADDRESS: MELISSA L. FRANCO ADAMS AND REESE, LLP 4400 ONE HOUSTON CENTER 1221 MCKINNEY HOUSTON, TEXAS 77010 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: SRI SPORTS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/488349
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The following informalities, however, must be addressed.
The applicant must insert a disclaimer of SPORTS in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213. The term is descriptive of a character or feature of the goods and services.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use SPORTS apart from the mark as shown.
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark in relation to any identified goods or services. The applicant must submit a specimen per international class of goods or services showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
The identification of goods is unacceptable because it refers to goods properly classified in more than the identified International Classes. The applicant may adopt one or more of the following identification formats, if accurate:
IC 019: Non-metal modular floors and non-metal suspended floors used for indoor and outdoor tracks; non-metal floors, namely, gymnasium surfaces, rehabilitation sports flooring, park and recreation flooring, ice flooring for hockey fields, suspended gymnasium flooring, badminton court flooring, handball court flooring, volleyball flooring, speed skating flooring, roller hockey flooring, lacrosse flooring, poured-in- place urethane athletic and multipurpose surfaces, gym flooring surfaces, portable flooring designed for racing, multipurpose athletic recreational flooring;
IC 20: Benches and bleachers for stadiums and arenas; portable seating for benches and bleachers;
IC 027: Athletic and recreational artificial and synthetic turf surfaces, namely, artificial and synthetic turf, portable artificial turf surfaces, roll-out surfaces, athletic tracks, football fields, running tracks, field surfaces, tennis courts and tennis surfaces, hockey flooring surfaces, backyard game courts, and shock absorption surfaces; carpeting, rugs, mats and matting for athletic and recreational surfaces, namely, golf driving range mats, putting greens, chipping mats and gymnasium exercise mats; shock absorbent floor pads; synthetic/natural turf hybrids flooring; gymnasium exercise carpets and mats;
IC 028: Athletic and recreational equipment, namely, gymnastic apparatus, floor exercise floors, balance beams, bar rails, reflex action gymnastic vaulting horses and gymnastic rings, volleyball, baseball and basketball equipment, namely, volleyball posts, nets and base and floor plates, baseball pitching machines, batting tees, protective screens, batting cages and netting, pitching mounds, baseball stadium, arena and fixture safety padding, line markers, basketball backboards, rims, backstops and portable backstops;
IC 031: Natural grass surfaces and non-artificial turf systems composed of (specify major component parts of systems);
IC 035: Wholesale and retail store services and distributorships featuring, athletic and recreational surfacing products, namely, artificial and synthetic turf and modular floors and suspended floors for constructing indoor and outdoor tracks, natural playing surfaces, portable surfaces, roll-out surfaces, athletic tracks, football fields, running tracks, field surfaces, tennis courts and tennis surfaces, natural grass surfaces, stabilized natural turf systems, hockey flooring surfaces, backyard game courts, and shock absorption surfaces; Wholesale and retail store services and distributorships featuring carpeting, rugs, mats and matting for athletic and recreational surfaces, namely, golf driving range mats, putting greens, chipping mats and gymnasium exercise mats, gymnasium surfaces, rehabilitation sports flooring, park and recreation flooring, ice flooring for hockey fields, suspended gymnasium flooring, badminton court flooring, handball court flooring, shock absorption pads for use with floor covering, volleyball flooring, speed skating flooring, roller hockey flooring, lacrosse flooring, synthetic/natural turf hybrids flooring, poured-in-place urethane athletic and multipurpose surfaces, gym flooring surfaces, portable flooring designed for racing, multipurpose athletic recreational flooring; wholesale and retail store services, and distributorships featuring athletic and recreational equipment, namely, gymnastic apparatus, floor exercise floors, carpets and mats, balance beams, bar rails, reflex action gymnastic vaulting horses and gymnastic rings, volleyball, baseball and basketball equipment, namely, volleyball posts, nets and base and floor plates, baseball pitching machines, batting tees, protective screens, batting cages and netting, pitching mounds, baseball stadium, arena and fixture padding, line markers, portable seating, benches and bleachers, basketball backboards, rims and backstops and padding for stadiums and arenas, basketball backboards, backstops, portable backstops, and basketball rims;
IC 037: Installation, repair and maintenance of athletic and recreational surfacing products, namely, artificial and synthetic turf and modular floors and suspended floors for constructing indoor and outdoor tracks, natural playing surfaces, portable surfaces, roll-out surfaces, athletic tracks, football fields, running tracks, field surfaces, tennis courts and tennis surfaces, natural grass surfaces, stabilized natural turf systems, hockey flooring surfaces, backyard game courts, and shock absorption surfaces; Installation, repair and maintenance of carpeting, rugs, mats and matting for athletic and recreational surfaces, namely, golf driving range mats, putting greens, chipping mats and gymnasium exercise mats, gymnasium surfaces, rehabilitation sports flooring, park and recreation flooring, ice flooring for hockey fields, suspended gymnasium flooring, badminton court flooring, handball court flooring, shock absorption pads for use with floor covering, volleyball flooring, speed skating flooring, roller hockey flooring, lacrosse flooring, synthetic/natural turf hybrids flooring, poured-in- place urethane athletic and multipurpose surfaces, gym flooring surfaces, portable flooring designed for racing, multipurpose athletic recreational flooring;
IC 040: Manufacture of athletic and recreational surfacing products, namely, artificial and synthetic turf and modular floors and suspended floors for constructing indoor and outdoor tracks, natural playing surfaces, portable surfaces, roll-out surfaces, athletic tracks, football fields, running tracks, field surfaces, tennis courts and tennis surfaces, hockey flooring surfaces, backyard game courts, and shock absorption surfaces; carpeting, rugs, mats and matting for athletic and recreational surfaces, namely, golf driving range mats, putting greens, chipping mats and gymnasium exercise mats, gymnasium surfaces, rehabilitation sports flooring, park and recreation flooring, ice flooring for hockey fields, suspended gymnasium flooring, badminton court flooring, handball court flooring, shock absorption pads for use with floor covering, volleyball flooring, speed skating flooring, roller hockey flooring, lacrosse flooring, synthetic/natural turf hybrids flooring, poured-in-place urethane athletic and multipurpose surfaces, gym flooring surfaces, portable flooring designed for racing, multipurpose athletic recreational flooring; manufacture for others of athletic and recreational equipment, namely, gymnastic apparatus, floor exercise floors, carpets and mats, balance beams, bar rails, reflex action gymnastic vaulting horses and gymnastic rings, volleyball, baseball and basketball equipment, namely, volleyball posts, nets and base and floor plates, baseball pitching machines, batting tees, protective screens, batting cages and netting, pitching mounds, baseball stadium, arena and fixture padding, line markers, portable seating, benches and bleachers, basketball backboards, rims and backstops and padding for stadiums and arenas, basketball backboards, backstops, portable backstops, and basketball rims to the order and specification of others.
To the extent the suggested identification of goods or services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at www.uspto.gov under the heading Trademarks and the subheadings Guidance and Manuals and Legal Resources. 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 and services that are not within the scope of the goods and services recited in the present identification.
If the applicant chooses to add classes to this application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods and services in each class and list the goods and services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods and 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. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
Deletion from Drawing
The “TM” is not part of the mark, and the applicant should delete this from the drawing. TMEP §§807.04 and 807.15.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Asmat A. Khan/
Trademark Attorney
Law Office 114
(703) 308-9114, ext. 196
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.