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  76/529902

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods_-Delete Parentheses

The identification of goods should be amended to DELETE the parentheses. The applicant is advised that parentheses and brackets should not be used in the identification of goods or services.  The only time parentheses may be used in an identification is when the parentheses merely explain or translate the matter preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification. 

 

The applicant may adopt the following amended identification of goods, if accurate:  

 

Men's apparel namely, dress shirts, sport shirts and knitted sport shirts, underwear, namely, boxer shorts, underwear briefs, tank tops, t-tops; collarless sweatshirts and T-shirts, slacks, pants, suits, coats, jackets, top coats, blazers, ski jackets, ski slacks, tennis shorts, tennis shirts, tennis sweaters, tops, ponchos, sweaters, cardigans, pullovers, jerseys, knit polo shirts, jogging suits, sweatshirts, sweatpants, warm-up suits, shells, shorts, turtlenecks, vests, swimwear, namely, bathing suits, matching or contrasting beach jackets; jeans, jean jackets, raincoats, scarves, gloves, earmuffs, handkerchiefs, ties, hosiery, suspenders, belts, headbands, pajamas, namely, polojamas, nightshirts, sleep shorts and pants; robes, uniforms, leather dress shoes, sport shoes, leather boots, rubber boots, sandals, sneakers, sport hats and caps.

 

For additional guidance, the applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual for the United States Trademark Office which may be found at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual is searchable using Ctrl+F. 

The applicant is also advised 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.

 

Translation Required

Applicant must also submit an English translation of the foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809. 

 

Advisory as to Dual Filing Basis

It is noted that applicant expressed an intent to proceed under both Trademark Act Sections 1(b) and 44(d) at the time of filing.  However, if  applicant now wishes to proceed relying on the applicant’s intent to use the mark in commerce under Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to continue relying on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

Counsel May Contact Examiner

The applicant’s attorney is encouraged to respond electronically to expedite prosecution of the application.   Questions regarding this action may be directed to the undersigned via telephone or email.

 

/kbp/

Kimberly Boulware Perry

Attorney, US Patent & Trademark Office

phone: 703-308-9112 x251; fax: 703-746-8112

www.gov.uspto.report/teas/index.html [responses]

kimberly.perry@uspto.govas/index.html [responses]

kimberly.perry@uspto.gov [direct]

 

 

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.