UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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:
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711,
718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has
searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C.
§1052(d).
IDENTIFICATION OF
GOODS
Class 17
An application must
specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, proper punctuation in identifications
of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between
each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id.
For example, the identification of goods “cleaners, namely, glass
cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in
the same international class. Id. However, by replacing the commas with semicolons after “glass cleaners” and
“deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” Id.
In this case, the semicolon after the wording “recreational equipment” in
the first clause of the identification must be replaced with a comma. The semicolon after the wording “protection from sports injury including” in the last clause of
the identification must be replaced with a comma.
The
identification of services is indefinite and must be clarified because it contains the open-ended wording “including.” See TMEP §§1402.01,
1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with
“namely.”
Applicant may amend the identification to list only
those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification. See 37 C.F.R.
§2.71(a); TMEP §§1402.06 et seq., 1402.07.
Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted
amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
The wording “grip tape”, “mouth guards”, “gloves” and “bowling sets” in the identification of services is indefinite and must be clarified because they are overly broad
and could include goods in other international classes. See TMEP §1402.01. Applicant may substitute the following wording, if
accurate: “grip tape for (specify sports equipment, e.g. golf clubs, tennis rackets)”;”mouth guards for athletic use”, gloves for (specify the sports, e.g., baseball
gloves, boxing gloves)”; “bowling sets comprised of (set forth the items in the bowling set. e.g. bowling balls, bowling pins)
CLASSIFICATION OF GOODS—Class 28
only
Applicant has classified the following goods in International Class 17: “sporting goods, namely, baseball gloves
and baseball bats, carriers specially adapted for sport balls and shin pads for use in soccer. Lacrosse sets comprising lacrosse sticks and balls and goal nets, jai alai set comprised of toy sticks
and balls and baskets; and athletic and recreational equipment designed for the protection from sports injury; namely, helmets, elbow protectors, knee protectors, hip-guards, abdominal protectors,
back protectors, mouth guards, shin guards, and gloves. However, the proper classification for each item is as follows: Class 28 for all items except “helmets” which
are in Class 9.
Therefore,
applicant may respond by (1) adding one or more of the above international classes to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting the goods and/or
services in International Class 9 (identified above) from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et
seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office
action.
IDENTIFICATION OF GOODS
Class 28
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or
has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid
ambiguity. Generally, commas should be used (1) to separate a series of related items identified within a particular
category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP
§1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within
an international class. Id.
In this
case, applicant must change the semicolon after the word “balls” in the first clause to a comma; change the comma after the words “tennis balls” to a semicolon and delete the following word “and” and
change the semicolon after the words” sport injury including” to a comma.
The identification of services is indefinite and must be clarified because it contains the open-ended wording “including.” See
TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and
replaced with “namely.”
The wording “football throwing machines and baseball and softball batting practice screens and cages”, “ grip tape”, “mouth guards”,
“gloves” and “bowling sets”” in the identification of services is indefinite and must be clarified because these terms are overly broad and it is not clear exactly what goods are intended by this
wording.. See TMEP §1402.01. Applicant may substitute the following wording, if accurate:
“sporting apparatus, namely football throwing machines for (specify sports-related function of the machine, e.g. to increase catching accuracy); sporting apparatus, namely, baseball and batting
practice screens and cages for (specify sports-related function of the machine, e.g. to improve batter’s swing); grip tape for (specify sports equipment, e.g., golf clubs, tennis rackets, ); “gloves
for ((specify sports; e.g. baseball gloves); “bowling sets comprised of (indicate contents of bowling sets, e.g. bowling bowls, bowling pins).
An
applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
CLASSIFICATION OF GOODS
Class
28
Applicant has classified the following goods and/or services in International Class 28: “body limb compression
sleeves for use in soccer and other sports”, “helmets for use during sports” However, the proper classification for each item is as follows: “body limb compression
sleeves for use in soccer and other sports” is classified in Class 10 and “helmets for use during sports” are classified in Class 9.
Therefore, applicant may
respond by (1) adding one or more of the above international classes to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting the goods and/or services in
International Classes 9 and 10 (identified above) from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et
seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office
action.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action
and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark
examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02,
709.06.
/Lucy Arant/
Trademark Examining Attorney
LO117
571-272-3542
lucy.arant@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the
status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.