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  76/604101

 

The assigned trademark examining attorney has reviewed the referenced application and has 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.

 

Scope of Foreign Registration

 

Applicant must either (1) amend the identification of goods in the application to correspond to the goods services identified in the foreign certificate of registration, or (2) delete the Section 44 basis for the goods beyond the scope of the foreign registration and substitute a basis under Trademark Act Sections 1(a) or 1(b) for those goods.  15 U.S.C. §§1051(a) or (b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

 

The identification of goods in the application is not acceptable because it designates goods that are broader in scope than the identification set forth in the foreign registration.  37 C.F.R. §2.32(a)(6).

 

The following wording exceeds the scope of the goods in the foreign registration “Divers’ apparatus, masks and gloves, diving suits” in International Class 9. 

 

If applicant chooses to amend the identification of goods in the application to correspond to the foreign registration, then these goods must be deleted.

 

If applicant chooses to assert different bases in the same application, then applicant must clearly state that it is claiming more than one basis, and must separately list each basis, followed by the goods to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce, under Trademark Act Section 1(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

If applicant chooses to assert a Section 1(a) use of the mark in commerce basis, applicant must satisfy the following requirements:

 

(1)  Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”

 

(2)  Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;

 

(3)  Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and

 

(4)  Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”

 

These requirements must be verified by applicant in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Alternatively, if applicant chooses to assert a Section 1(b) use of the mark in commerce basis, applicant must submit the following statement:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

 

Identification and Classification of Goods

 

The wording “knives” in the identification of goods needs clarification because it is too broad and could contain goods in more than one international class.  Applicant may adopt the following identification of goods, if accurate: 

 

“Tableware, namely, knives, forks, and spoons; multiple-bladed knives; collapsible shovels” in International Class 8.

 

The current wording used to describe the goods in International Class 12 needs clarification because it is too broad and could contain goods in more than one international class. Applicant may adopt the following identification of goods, if accurate: 

 

“Bicycles; motorized and non-motorized scooters; Bicycle, motorized scooter, and non-motorized scooter parts and accessories, namely, [applicant must specify, e.g. bells, horns, kickstands, etc.]” in International Class 12.

 

The wording “parts thereof” and “huckaback baby carriers” in the identification of goods in International Class 18 needs clarification because it is too broad and could include goods in more than one international class. Applicant may adopt the following identification of goods, if accurate: 

 

“Bags for climbers; bags for campers; rucksacks; mountain bags; beach bags; handbags; parts of bags, namely [applicant must specify, e.g. straps]; and huckaback baby carriers worn on the body” in International Class 18.

 

The wording “mattresses (not included in other classes)” in the identification of goods needs clarification because it is indefinite. Applicant may adopt the following identification of goods, if accurate (see explanation for bolded language in next paragraph): 

 

“Mattresses, namely, inflatable and non-inflatable mattresses for camping and mattresses made of flexible wood; sleeping bags for camping; stools; chairs; tables; benches for fishing; plastic boxes; and non-metallic cases for camping tableware” in International Class 20.

 

The wording “tableware for camping” and “boxes, crates and bottles, all aforementioned goods being insulated” needs clarification because it is indefinite. Applicant classified the goods “non-metallic cases for camping tableware” in International Class 21; however, the correct classification is International Class 20.  Applicant must either delete these goods or add them to the existing identification of goods for International Class 20 (see bolded language in identification above).  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Applicant may adopt the following identification of goods, if accurate: 

 

“Flasks; mess-tins; tableware, namely, [applicant must specify, e.g. plates, bowls, salt and pepper shakers, etc.] for camping; insulated boxes, crates, and bottles for food” in International Class 21.

 

The wording “nets” and “cables” in the identification of goods needs clarification because it may include goods in more than one international cloth. Additionally, applicant classified the goods “sailcloth” in International Class 22; however, the correct classification is International Class 24.  Applicant must either delete these or add International Class 24 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). Applicant may adopt the following identification of goods, if accurate:

 

“Tents; insect protection nets; ropes; cable ties and straps for fastening and securing objects such as bundles of wire together; ship sails; fishing nets” in International Class 22.

 

“Sailcloth” in International Class 24.

 

The wording “balls and badminton shuttlecocks” needs clarification because it is indefinite. Applicant may adopt the following identification of goods, if accurate:

 

“Games and playthings, sporting and gymnastic articles, namely, roller skates, inline roller skates, skateboards, snowboards, ice skates, sleds, skis, ski bindings, ski poles, sport bags adapted for the transport of these sporting articles; protection devices for athletic use, namely elbow pads, wrist pads, ankle pads, shin pads, shoulder pads, knee pads; balls, gloves and bats for baseball, American football balls, basketballs, hockey sticks, flying discs, boomerangs, darts; indoor gymnastic and sporting articles, namely, sport balls for fitness exercises, stretch bands for physical exercises, jump ropes, manually operated body-building equipment, manually operated machines for physical exercises, jump ropes; rackets for tennis, squash, badminton, table tennis and racquetball, racket covers and strings for tennis, squash, badminton and racquetball rackets; covers and bags for the aforesaid rackets; racket grips; tables for table tennis; table tennis, tennis, and squash balls and badminton shuttlecocks; skates, sticks and gloves for ice hockey; snow sleds for recreational use; bags made of leather and fabric adapted for the transport of sporting articles; fishing tackle, cases and covers for fishing rods” in International Class 28.

 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

 

 

 

 

 

Information regarding addition of International Classes

 

Please note that if applicant adds an additional class, then applicant must comply with each of the following for those goods a foreign registration under Trademark Act Section 44(e)

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

Standard Character Claim

 

Applicant must submit the following standard character claim: 

 

“The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

 

Declaration

 

Applicant must submit a statement attesting to the facts set forth in the application, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.32(b) and 2.33.  No signed verification was provided with the original application filed on July 27, 2004.

 

A statement was filed on August 27, 2004, but it did not contain the required allegation that “applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.”  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.

 

The following declaration is provided for the applicant's convenience:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Kristina Kloiber/

Examining Attorney

Law Office 116

(571) 272-5895

(571) 273-9116 Fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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