Offc Action Outgoing

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. Section 1052(d). TMEP section 704.02.

Requirement: Identification and Classification of Goods

The identification of goods is unacceptable as indefinite. Additionally, applicant may have misclassified some of the goods. Accordingly, applicant must amend the wording of the identification and the classification of goods as indicated. TMEP sections 1402.01, 1401.02(a) and 1401.03(b).

Boxers – Applicant must indicate that these are either “boxer briefs” or “boxer shorts.”

Towels – These goods are properly classified in class 24.

For example, the wording and classification in its entirety may be amended as follows:

CLASS 24:

- towels.

CLASS 25:

- clothing, namely, shirts, sweatshirts, sweatpants, shorts, boxer shorts, panties, swimsuits, socks, pants, beanies, hats, shoes, and jerseys.

In the identification, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).

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(a); TMEP section 1402.06. Therefore, applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

Applicant must adopt the appropriate international classification number for the goods and services identified in the application. The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services. 37 C.F.R. §6.1; TMEP §§1401 et seq.

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

Requirement: Requirements for a Multiple-Class Application

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

(1) Applicant must list the goods and/or services 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 and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

Requirement: Meaning of the Mark

The applicant must indicate whether IZDASHIIZ and/or IDZ have any significance in the relevant trade, any geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.61(b).

Requirement: Clarification of Nature of Drawing

Because of the degree of stylization of the font used to depict the mark on the drawing page, applicant must confirm that a standard character drawing format was intended. TMEP §§807.03 et seq. and 807.04 et seq. If a special-form drawing was intended, then applicant must state so for the record. 37 C.F.R. §2.52(b).

In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font, style, size, or color. A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style. A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. 37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.

Advisory: Mark for Which Registration is Sought

In the present case, the application shows two different marks: IZDASHIZ IDZ appears on the separate drawing page and IZDASHIZ appears in the body of the application. The applied-for mark has been determined to be IZDASHIZ IDZ, the mark that appears on the separate drawing page of the application.

If an application shows two different marks, one in the body of the application and one on a separate drawing page, then the mark on the separate drawing page controls for purposes of determining what the mark is. In such cases, the Office disregards the mark found in the body of the application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01.

Advisory: Possible Refusal Regarding More Than One Mark on Drawing Page

In view of the nature of the proposed mark, applicant is advised that, upon the trademark examining attorney’s consideration of an amendment to allege use or statement of use, registration may be refused on the ground that the application seeks registration of more than one mark. Trademark Act Sections 1, and 45, 15 U.S.C. §§1051 and 1127. An applicant may apply for only one mark in a single application. 37 C.F.R. §2.52; TMEP §807.01. In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974).

In determining whether applicant is seeking registration for more than one mark, the trademark examining attorney will consider the display of mark shown on the specimen. If the specimen shows elements of the mark on the drawing page separated to such an extent that they appear as separate marks, then registration may be refused accordingly.

Advisory: Applicant May Wish to Hire an Attorney

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

Response Guidelines

Please note, there is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.

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

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.