UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/664284
APPLICANT: WILSON, HEAVENA MARCEE
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: WORKAHOLICS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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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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 76/664284
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.
However, the following requirement(s) must be addressed.
Applicant must specify his or her national citizenship for the record. Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.
The identification of goods is unacceptable as indefinite because terminology such as “clothing”, “sportswear”, “apparel”, and “accessories” are all too broad and indefinite for registration purposes. The applicant in each instance must list each and every specific item of clothing, such as “clothing, namely, shirts, pants, hats, socks and dresses.” There are certain classes of clothing which are considered acceptably definite by the Office, these are: beachwear, underwear, footwear, headwear, infantwear, loungewear, neckwear, rainwear, ski wear, sleepwear, nightwear, swim wear, surf wear and tennis wear. Suggestions and explanations are incorporated into the identification proposed below. TMEP §1402.01. The applicant may adopt the following identification, if accurate:
Clothing and apparel, namely {indicate specific items of clothing, such as shirts, pants, jackets, etc.}; headgear, namely, {specify type, e.g., hats, caps}; shoes; footwear. International Class 25.
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.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Applicant asserts use of the mark in commerce for CLOTHING, HEAD GEAR SHOES FOOTWEAR, APPAREL ACCESSORIES and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods and/or services. Applicant must delete one basis or divide the goods and/or services between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
The drawing is not acceptable because it is hand written against a printed application form. In no place is the drawing separated from the text of the application form. As such, it will not create a high quality image when reproduced. A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52.
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.52, 2.53(c) and 2.54(e).
If applicant submits a new drawing in the form of a digitized image, it must be in JPG format. The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; TMEP §807.14. The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(c).
If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Who? Vision Systems Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.” Visa International Service Association v. Life Code Systems, Inc., 220 USPQ 740, 743 (TTAB 1983). “That is, the new and old forms of the mark must create essentially the same commercial impression.” In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988).
Applicant’s claim of ownership of an Illinois state registration will not be printed on any registration that may issue from this application because state registration marks are not pertinent to federal trademark applications.
Applicant must clarify whether it is applying for a certification mark or a trademark. A certification mark is not the same as a trademark or service mark, i.e., it is not used to identify the source of goods and/or services. Rather, a certification mark is used to certify one of the following:
(1) Regional or other geographic origin of certain goods and/or services;
(2) Material, mode of manufacture, quality, accuracy or other characteristics of such goods and/or services; or
(3) That members of a union or other organization performed the work or labor on the goods and/or services.
Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1306.01.
If Applicant intends to apply for a certification mark, the below requirement applies.
Whole Form Correction to Apply for Certification Mark
If Applicant intends to apply for a certification mark, please complete and return the form for a certification mark that follows. TMEP §§1306 et seq. A new filing fee is not required.
Certification Mark Application 15 U.S.C. §1054
Principal Register - Substitute Application
(Fill in Sections 1-7 below. Submit Certification Standards in 8 as appropriate. Sign and Date.)
(1) Application Serial Number:
(2) Applicant’s Name:
(3) Applicant’s Mailing Address:
(4) Applicant’s Entity Type: (Check one and supply requested information)
____ Individual – Citizen of (Country):
____ Partnership – U.S. State where organized (Country, if appropriate):
Names and Citizenship (Country) of General Partners:
____ Corporation – U.S. State (Country, if appropriate) of Incorporation:
____ Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):
(5) GOODS AND/OR SERVICES BEING CERTIFIED: Applicant must list the goods and/or services below. (The listing should not include the word “certification.”)
(6) CERTIFICATION STATEMENT: Applicant must specify what feature of the goods or services is being certified, e.g., a particular regional origin, a characteristic or quality of the goods, that the labor was performed by a particular group, etc.
The certification mark certifies that ________________________________________
(7) BASIS FOR APPLICATION: (Check basis or bases which apply, but do not check both the first and second bases (A & B) for the same goods and services – and supply requested information related to each basis)
Applicant has adopted and is exercising legitimate control over the use of the certification mark in commerce and has been exercising legitimate control over the use of the mark in commerce since the filing date of the application.
A specimen showing the mark used by authorized persons is submitted with this application.
Specify Date of First Use Anywhere:
Specify Date of First Use in Commerce:
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Filing:
Specify Foreign Application Serial No.:
Specify Date Foreign Application Filed:
Applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce on or in connection with the above-identified goods/services, and has had a bona fide intention to exercise legitimate control over the use of the mark in commerce since the filing date of the application.
Specify Country of Foreign Registration:
Specify Foreign Registration Number:
Specify Registration Date:
Applicant is not engaged (or will not engage) in the production or marketing of the goods or services to which the mark is applied.
(8) COPY OF CERTIFICATION STANDARDS MUST BE SUBMITTED: Applicant must provide a copy of the standards applicant uses to certify the goods and/or services. If applicant files based on actual use in commerce, then these standards must be submitted with the application. If applicant files based on an intent to use, the standards should be provided with the allegation of use (amendment to allege use or statement of use).
DECLARATION
The undersigned being hereby warned that willful false statements and the like are made 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 s/he is properly authorized to execute this application on behalf of applicant; that s/he believes applicant to be the owner of the certification mark sought to be registered, or if the application is filed under 15 U.S.C. §1051(b) or §1126, that s/he believes applicant is entitled to exercise legitimate control over the use of the mark in commerce; that, to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the above identified 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 are made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
Date:
Signature:
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Print or Type Name and Position of Signatory
/S. David Sterkin/
Trademark Attorney
U.S. Patent and Trademark Office
Law Office 110
(571) 272-5494
HOW TO RESPOND TO THIS OFFICE ACTION:
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.