UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/648835

 

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.

 

Disclaimer

 

The applicant must insert a disclaimer of the descriptive wording POLO GAME in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

 

POLO is defined as:

 

.

1.          A game played by two teams of three or four players on horseback who are equipped with long-handled mallets for driving a small wooden ball through the opponents' goal.[1]

 

GAME is defined as:

2.          a. A competitive activity or sport in which players contend with each other according to a set of rules: the game of basketball; the game of gin rummy.[2]

 

 POLO GAME is merely descriptive of the goods, some of which could be used for a  polo game.

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “POLO GAME” 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.

 

Option to Delete Basis – Application Filed Under 44(e) and 1(b) – Applicant May Delete Section 1(b)

 

Applicant must advise the trademark examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration.  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.

 

Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.

 

Identification and /or Classification of Goods

 

The identification of goods is unacceptable as indefinite and/or misclassified. 

 

The “protective helmets for sports” are misclassified and must be amended to Class 9.

 

Also, the wording “elbow pads” are indefinite.  The applicant must specify the use, for example, “elbow pads for athletic use,” in Class 28, is an acceptable identification in the Trademark ID Manual.

 

In addition, the term “athletic protective pads” is indefinite.  The type and purpose of the athletic protective pad must be specified, for example, “athletic football shoulder pads,” in Class 28.

 

Also, the wording “fencing equipment” is indefinite.  The common commercial name of each type of fencing equipment must be listed.  For example, the following is acceptable:  Fencing equipment, namely, foils, gauntlets, and masks, in Class 28.

 

SUGGESTED IDENTIFICATION OF GOODS

 

The applicant may adopt the following identification, if accurate: 

 

Protective helmets for sports, in Class 9; and

 

Handballs; volleyballs; basketballs; shuttlecocks for badminton; table tennis balls; golf balls; golf-clubs; golf tees; golf club heads; head covers for golf clubs; golf bags; bags specially adapted for sports equipment; in-line skates; roller skates; tennis balls; footballs; bowling balls; badminton rackets; table tennis bats; tennis rackets; squash rackets; baseball bats; cue sticks; billiard cues; protective covers for rackets; baseball mitts; golf tee markers; relay batons; exercise equipment, namely, chest expanders, powered treadmills for running, weight lifting machines; knee pads for athletic use; chest protectors for sports; shoulder pads for athletic use; elbow pads for athletic use; shin pads for athletic use; football shoulder athletic protective pads; exercise trampolines; surf boards; skateboard; dumbbells; exercise benches; stationary exercise bicycle; exercise treadmills; exercise machines; fencing equipment, namely, foils, gauntlets, and masks; archery bow strings; exercise weights; tennis racket strings; badminton racket strings; squash racket strings; rackets and strings for rackets; sportsman's fishing bags; inflatable float tubes for fishing; fishing rods; fishing hooks; fishing lines; chess sets; checkers; gaming equipment, namely chips; dice; dominoes; construction toys; toy building blocks capable of interconnection; children's multiple activity toys; infant development toys; flying discs; arrows; skipping ropes; and gymnastic apparatus, in Class 28.

 

TMEP §1402.01.

For further assistance regarding an acceptable listing of goods and/or services and the proper classification of goods and services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://tess2.gov.uspto.report/netahtml/tidm.html.

Additions to Identification Not Permitted

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

REQUIREMENTS FOR MULTIPLE CLASS APPLICATIONS

 

The applicant has paid the filing fee for one class.  However, the goods are in two classes, as noted above.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/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/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Ellen Awrich/

Trademark Attorney

Law Office 116

571-272-9123

ellen.awrich@USPTO.GOV

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.