Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

On April 13, 2010, action on this application was suspended pending the disposition of Application Serial No. 77773904. The referenced pending application has abandoned and is no longer a bar to the registration of applicant’s mark.

Since new requirements with respect to the identification of goods are included herein, this action is NON-FINAL.

Since the mailing of the April 2010 correspondence, Registration No. 2857285 has been cancelled. Therefore, the refusal under Section 2(d) because of likelihood of confusion with the mark in Reg. No. 2857285 is WITHDRAWN. The refusal under Section 2(d) with respect to the goods listed in Class 28 is however maintained and continued in light of Reg. No. 2968118.

The identification of goods requires further modification for definiteness. The comments and suggestions set forth in the April 2010 Office action are incorporated and re-stated below along with additional requirements.

Identification of Goods and Services Requires Amendment

The identification of goods and services is indefinite as shown below. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

Identification of Goods and Services Requires Further Amendment

The identification of goods and services remains indefinite and must be further clarified as highlighted below in ALL UPPERCASE lettering. See TMEP §1402.01.

[ACCEPTABLE AS LAST AMENDED] IC 3: Fragrances for personal use; perfume; perfume oils, eau de parfum; eau de toilette, moisturizing skin lotion; body lotion; body oil; eye cream; eye gel; bath products, namely, bath and shower gel, bubble bath, bath soap in liquid, solid or gel form, bath oil, talcum powder, dusting powder, body powder, body emulsions, body masks, body scrubs, body spray and body cream; deodorant for personal use; cosmetics, namely, blusher, lipstick, lip gloss, lip balm, cosmetic pencils, lip liners, eye liners, mascara, makeup, eye makeup, facial makeup, and foundation makeup; massage oil; compact containing makeup, namely, face powder, facial makeup, foundation makeup, rouge, eye makeup, and eye makeup remover; eye pencils; eye shadow; eyebrow pencil; false eyelashes; adhesive for affixing false eyelashes; skin bronzing creams and body makeup; cosmetic sun tan oil; shampoo; hair conditioner; hair spray; solid fragrance for personal use; potpourri; incense; sachets; make-up kits comprised of lipstick, blush, mascara and eye liner

IC 9: Blank magnetic data carriers; pre-recorded compact discs, digital versatile discs and downloaded audio and audiovisual recordings in the fields of music, entertainment, and education; eyewear; prepaid magnetically encoded calling cards; video output game equipment for use with televisions sold as a unit for playing a parlor type game; computer games, namely, game discs and computer game tapes; video and computer game cartridges; magnetically encoded credit and debit cards; electronic devices, namely, computer hardware, encoded smart cards containing data and/or programming and electronic smart card readers used for biometric recognition and/or for capturing, verifying and authenticating biometric data to secure communications and control access for use in financial, security, retail, transport and vending applications; electronic biometric readers, and electric smart card and biometric readers used for biometric recognition and/or capturing, verifying and authenticating biometric data to secure communications and control access for use in financial, security, retail, transport and vending applications; encoded electronic chip cards containing programming used to secure communications and control access to physical areas, computers, computers networks, and electronic devices and systems for use in financial, security, retail, transport and vending applications; computer software related to the foregoing applications, namely, programs for capturing, verifying and authenticating biometric data and storage of biometric data; computer hard ward and computer software for controlling and using electronic devices used in financial, security, retail, transport and vending applications for the purposes of biometric recognition and for capturing, verifying and authenticating biometric data to secure communications and control access. computer security software for electronic devices used in financial, security, retail, transport, and vending applications for the purposes of biometric recognition and for capturing, verifying and authenticating biometric data to secure communications and control access; eyewear, sunglasses; helmets for use in sports, safety AND WITH motorcycleS, encoded smart cards containing data and/or programming for use to purchase goods and services; MAGNETICALLY ENCODED credit cards, debit cards, gift cards, phone cards; [SPECIFY NATURE OF THIS ENTRY: “GAIN ACCESS TO RESTRICTED AREAS, ACCESS MEDICAL, FINANCIAL OR OTHER RECORDS OR PERFORM OTHER OPERATIONS REFERENCING DATA STORED ON THE CARD”], computer hardware in the nature of encoded smart cards containing proximity payment devices known as transponders, electronic card readers for magnetically encoded cards, radio frequency identification devices and cards containing an integrated circuit chip; telecommunications equipment, namely, transponders, computer operating systems for financial transactions on computer networks;

Applicant has indicated that the following bracketed language was inadvertently excluded from the suggested description in the first Office action. However, in reviewing the original application as filed, these entries are not included. [sound recordings; namely, pre-recorded phonograph records, audio tapes, compact discs, videotapes, DVDs, and motion picture films featuring music and MUSICAL entertainment]

[ACCEPTABLE AS LAST AMENDED] IC 12: Bicycles, tricycles, wagons

[ACCEPTABLE AS LAST AMENDED] IC 14: Fine and costume jewelry, namely, necklaces, bracelets, rings, charms, tie clips, key rings of precious metal, earrings, watches, pins, brooches, ankle bracelets, toe rings, and body jewelry; clocks; tiaras

[ACCEPTABLE AS LAST AMENDED] IC 15: Musical instruments, namely, electrical guitars, non-electrical guitars, drums, cymbals, triangleS, pianoS, violinS, fluteS, harmonicaS, organS

[ACCEPTABLE AS LAST AMENDED] IC 16: Paper goods, namely, craft paper, stickers, albums for displaying photos, coins and stickers, decals, stationery, namely, writing paper, greeting card kits containing greeting cards and decorations therefor, removable and temporary tattoos, iron-on transfers for tee shirts and bags, rub-on transfers, rhinestone decals and rhinestone adhesive transfer sheets to decorate cell phones, notebooks, autograph books, brag books, bumper stickers, children's activity books, children's books, children's wall stickers and murals, comic books, comic strips appearing in newspapers, magazines or books, educational learning cards, flash cards, activity cards, workbooks, story books, puzzle books, printed puzzles featuring entertainment, music, and education themes; non-magnetically encoded prepaid purchase cards for use to buy goods and services; paper place mats, coloring books for children; writing instruments, namely, pens, pencils, mechanical pencils, erasers, markers, crayons, high lighter pens; folders, paper, pencil sharpeners, and book markers, trading card discs of paper or cardboard; address books, scrapbooks, note cards, holiday cards and greeting cards, art prints, graphic and printed art reproductions, paper gift bags, memo pads, bookends, gift wrapping paper, rubber stamps, stationery, trading cards, chalk boards for home and school use; commemorative stamps sheets, glass paper weights; PLAYING CARDS [MOVED FROM IC 28 DESCRIPTION]

IC 18: Pet collars, pet necklaces, pet hair ornaments, pet coats, pet sweaters, pet hats, pet shoes, pet carriers; billfolds, duffel bags, carry-on bags, back packs, luggage, beach bags, ~~LUNCH BOXES~~; handbags, purses, namely, leather purses, fur purses, vinyl purses, leather wallets, vinyl wallets, coin purses; identification cases, make up cases sold empty, leather shoulder belts; leather key chums, briefcases, book bags [LUNCH BOXES MUST BE DELETED FROM IC 18; IT HAS ALREADY BEEN PLACED PROPERLY IN IC 21]

[ACCEPTABLE AS LAST AMENDED] IC 20: Picture frames; wind chimes

IC 21: Household and novelty items, namely, mugs, cups, drinking glasses, pitchers, decorative and commemorative plates and bowls, serving platters and serving utensils for serving food, figurines and sculptures of ceramic, china, crystal, earthenware, glass, porcelain, terracotta, ~~BRONZE~~ [bronze sculptures are in Class 6], vases, [THESE GOODS APPEAR TO BE MOBILES FOR CHILDREN WHICH ARE IN CLASS 28: SUSPENDED DECORATIONS, WITH BABY OR ENTERTAINMENT THEMES], decorative glass, decorative masks, lunch boxes

[ACCEPTABLE AS LAST AMENDED] IC 24: Bed linen, namely, pillow shams, pillow cases, sheets, duvet covers, cushion covers, throws, blankets; towels, drapery, beach towels

IC 25: Men's, women's, children's and infant's clothing, namely, aprons, catholic uniforms, ball gowns, underwear, underclothes, undershirts, bras, teddies, panties, thongs, camisoles, slips, teddies, tights, underclothes, boxer shorts, leggings, beachwear, belts, Bermuda shorts, bib overalls; gloves, ski gloves, bicycle gloves, wet suit gloves; blazers, blouses, boas, bonnets, booties, bow ties, men’s ties, briefs, camp shirts, capes, cardigans, coats, cheerleader uniforms, DANCE OUTFITS and uniforms, NAMELY, <SPECIFY THE ARTICLES OF THE DANCE OUTFITS, e.g., SWEATPANTS, SWEATSHIRTS, LEGGINGS, etc >, motorcycle jackets, motorcycle gloves, denim jackets, dresses, dungarees, ear muffs, mufflers, scarves, neckties, neck wear, fleece pullovers, formal wear, namely, evening gowns, bridal gowns, tuxedos; fur coats, fur jackets, fur skirts, fur vests, fur footwear, fur head wear, shawls, stoles; sleepwear, namely, sleeping gowns, pajamas, nights shirts, lounge wear, night gowns, bath robes, bath wraps; gym shorts, shorts, sun suits, halter tops, hat bands, head bands, sun visors; head wear, namely, hats, caps, baseball caps, straw hats, cowboy hats, chefs’ hats, ~~HELMETS,~~ ~~WIGS~~, beanies, skull caps, novelty head wear with attached wigs; masquerade costumes and masks sold in connection therewith, Halloween costumes, baseball uniforms, hosiery, jackets, jeans, jerseys, hooded sweatshirts, jogging suits, sweat suits, sweat pants, sweat shirts, sweat shorts, sweat tops, sweat socks, tank tops, vests, leather and fabric coats, leather and fabric jackets, mittens, moccasins, mock turtle neck sweaters, blazers, turtle neck sweaters, sweaters, skirts, shirts, shorts, slacks, trousers, t-shirts, tank tops, tops; suits, for both men and women; sport shirts, sports jackets, socks, pants suits, pantyhose, parkas; ski wear, namely, ski jackets, ski masks, ski pants, ski suits, ski boots. golf wear, namely, golf shorts, golf pants, golf shirts, golf skirts, golf caps, golf gloves; polo shirts, ponchos, pullovers; rain wear, namely, rain coats, trench coats, rain jackets, surf wear, tennis wear, bathing suits, swimming suits, swimming trunks, bikinis, beach towels, beach cover ups, bathing caps, WORK-OUT OUTFITS, NAMELY, <SPECIFY THE ARTICLES OF THE WORK-OUT OUTFITS, e.g., SWEATPANTS, SWEATSHIRTS, LEGGINGS, etc.>, wrist bands, one-piece playsuits, one-piece infant garments, suspenders, suspender belts, men's, women's, children's and infant footwear, namely, shoes, dance shoes, toe shoes, athletic shoes, beach shoes, flip flops, boots, booties, bath slippers, rain boots, sneakers, tennis shoes, baseball shoes, rubber shoes, slippers, house slippers [HELMETS DELETED BECAUSE THEY ARE CLASS 9 GOODS AND ARE ALREADY INCLUDED IN THE CLASS 9 DESCRIPTION ABOVE; WIGS ARE CLASS 26 GOODS AND LIKEWISE ARE ALREADY LISTED IN THAT PROPER CLASS 26 HEREIN.]

[ACCEPTABLE AS LAST AMENDED] IC 26: Hair ornaments, namely, barrettes, combs, hair clips, ponytail holders, hair sticks, bobby pins, jeweled hair bands, wigs

IC 28: Toys, games, playthings, and sporting goods, namely, action figures and accessories therefor, stuffed toy animals; baby's multiple activity toys; toy bake ware and cookware; balloons; toy banks; bath toys; bathtub toys; inflatable bath toys; ride-on toys; inflatable ride-on toys, equipment sold as a unit for playing card games; toy cars; dolls, beanbag dolls; paper dolls, rag dolls, soft sculpture dolls, doll accessories and play sets, namely, doll cases, doll clothing, doll houses, doll house furnishings, doll clothes and costumes; stuffed toys; checker sets; chess sets; children's play cosmetics; child's multiple activity toys; computer toy, namely, battery powered computer game with LCD screen which features animation and sound effects, toy construction blocks; infant's action crib toys; flying discs; electronic hand held game units; hand held unit for playing video games, electronic game equipment with a watch function; electronically operated toy motor vehicles; board games and game equipment sold as a unit for playing board games; card games; manipulative games; parlor games; role-playing games; stand-alone video output parlor type computer game machines, action type target games; coin operated and non coin operated stand-alone video output game machines; rocking horses; jigsaw puzzles; kite; manipulative puzzles; paper face masks; toy model train sets and accessories therefor, toy model vehicles and related accessories sold as a unit therewith, electronically operated toy motor vehicles; electronic battery operated action toys; toy magic tricks and noisemakers, toy whistles; party favors in the nature of small toys; toy cap pistols; plush toys; soft sculpture plush toys. three dimensional cube type puzzles; toy record player for playing tunes and cassettes and discs, inline roller skates, ice skates, toy roller skates, toy inline skates and accessories therefor, namely, knee, wrist, and elbow pads, boogie boards, water squirting toys; teddy bears; wind up walking toys; wind up toys; non-motorized non-electric mobile self-propelled riding toys; toy trucks; twirling batons; toy zip guns; gymnastic apparatus, namely, parallel bars and in-and-out-door climbing units for playgrounds, balls, namely, playground balls, soccer balls, sport balls, baseballs, basketballs, and foam balls; baseball gloves, swimming floats for recreational use; head covers for golf clubs; golf balls; golf clubs; inflatable swimming pools for recreational use; kick board floatation devices for recreational use; toy musical instruments, namely, electrical and non-electrical guitars, drums, triangle, trumpet, flute, violin, piano, harmonica, gymnastic parallel bars; skis; snow skis; snow boards; skate boards; skipping ropes; jump ropes; snow sleds for recreational use; surf fins; surfboards for recreational use; body boards; swim fins; inflatable and buoyant bath toys; ride on toys; musical toys; latex squeeze toy figures; exercise equipment, namely, stationary cycles, treadmills, star stepping machines; toy sunglasses, weightlifting machines, and free weights. non-illuminating Christmas tree ornaments, jigsaw puzzles, 3-d puzzles, puzzles viewers for 3-d plastic transparencies, return spinning tops, golf balls, soap bubble wand and solution sets, puppets and marionette puppets, toy clown noses, magic tricks, toy animals, toy robots, toy watches, toy weapons, toy cell phones, hobby craft kits to make jewelry, hobby craft kits to decorate mirrors, shirts and purses, collectable dolls, snow globes [PLAYING CARDS MOVED TO IC 16]

IC 35: [most semi-colons are replaced herein with commas for clarity] Retail store services and wholesale services featuring women’s, men’s, children and infant clothing, purses and luggage, perfume, bath products, make-up, and tanning creams, jewelry, pet clothing and accessories, hair accessories, women’s, men’s, children and infant footwear, sunglasses, eyewear, toys, musical instruments, sports clothing and equipment, bed and home linens, costumes, household and novelty items, paper goods, blank magnetic data carriers, pre-recorded compact discs, digital versatile discs and downloaded audio and audiovisual recordings in the field of music, entertainment and education, prepaid magnetically encoded calling cards, video output game equipment for use with televisions sold as a unit for playing a parlor type game, computer games, namely, discs and computer game tapes, video and computer game cartridges

IC 36: Charge card and credit card services; debit card services; point-of-sale and point-of-transaction services, namely, providing secure communications, transactions and payment options using a mobile device at a point of sale, electronic payment services, namely, electronic processing and transmission of bill payment data

Advisory: Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

Multiple Class Application

As noted previously, the application identifies goods and/or services that are classified in at least TEN classes; however, the fees submitted are sufficient for only ONE class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 109

Telephone: 571.272.9287

Email: heather.thompson1@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.