UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

CONTINUING FINAL OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/12/2008

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on August 6, 2008.

 

Final requirements were issued with regard to the class 28 identification and classification of goods, multiple-class application  requirements, and proper specimens for classes 9 and 24 as well as properly verified statements indicating use of the specimens. 

 

Applicant has complied with all the requirements with the exception of a portion of the wording of the class 28 identification and classification of goods.  Accordingly, the final requirements are continued with regard to the specified class 28 identification and classification of goods and the requirement to comply with the requirements for a multiple-class application.  See37 C.F.R. §2.64(a).

 

Continued Final Requirement With Regard to Specific Class 28 Goods:  Identification and Classification of Goods

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Additionally, the some of the goods may be classified incorrectly.  Applicant must amend the application to classify the goods as indicated below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Specifically, the following wording and/or classification is unacceptable:

 

Gear bags in the nature of sports protective equipment, balls namely, soccer balls, volleyballs, basketballs, footballs, baseballs, softballs, tennis balls and golf balls, baseball gloves, softball gloves, catcher's mitts, basketball, and football tees – First, it is unclear how the wording after “in the nature of” modifies the wording “gear bags.”  That is, while the wording “gear bags” identifies some type of bags and applicant was required to clarify what was meant by “gear” in order to clarify the nature of the bags and where to properly classify such goods, applicant has followed this wording by wording which identifies sports equipment.  Second, the wording “sports protective equipment” is indefinite – and, as noted above, does not appear to identify any type of bags.  Moreover, it is unclear whether such goods fall within the scope of class 28.  Such wording does not seem to fall within the scope of “gear bags.”  Furthermore, the wording “balls namely, soccer balls, volleyballs, basketballs, footballs, baseballs, softballs, tennis balls and golf balls, baseball gloves, softball gloves, catcher's mitts, basketball, and football tees” identifies goods which not are not within the scope of “gear bags.”  Additionally, the wording “soccer balls” is not within the scope of the previously amended identification of goods and therefore must be deleted from the application.  It is noted that the remainder of this wording appears elsewhere in the application. 

 

Applicant may amend the above wording as follows in class 28: 

 

Sporting goods, namely, ball bats, namely, baseball bats and softball bats; baseball batting cages, ball gloves, namely, baseball gloves and softball gloves; ball mitts, namely, baseball mitts, softball mitts and catcher's mitts, ball pitching machines, baseball batting tees, golf tees, baseballs, baseball bases, grip tapes for baseball bats, bat weights, baseball batting training apparatus in the nature of a batting chute, batting gloves, catcher's masks, catcher's nets, baseball training apparatus in the nature of backboards, dimpled baseballs, baseball glove lacing, baseball glove oil, indoor baseballs, knee wedges, lineup cards, perforated baseballs, pine tar rags for use with baseball bats, ball pitching machine covers, pitching screens to be used in connection with ball pitching machines, rosin bags for use with baseballs, bags specially adapted for sports equipment in the nature of golf bags, bat bags, gear bags in the nature of bags specially adapted for sports equipment; balls namely, volleyballs, basketballs, footballs, baseballs, softballs, tennis balls and golf balls, baseball gloves, softball gloves, catcher's mitts, basketball, and football tees; basketball tube bags, volleyball tube bags, baseball training apparatus, namely, running chute trainers, baseball strike counters for use by umpires for tracking the number of balls and strikes thrown by a pitcher in an at-bat in the nature of a handheld mechanical device, balls for tee ball, umpire brushes for baseball plates, basketball backboards, basketball ball carts, basketball hoops, basketball nets, basketballs, eye black for reducing sun glare for sports activities, football ball brush for cleaning ball, footballs, rubber football tees, golf balls, golf clubs, platform tennis paddles, platform tennis grip tape, platform tennis grips, platform tennis gloves, platform tennis miffs, volleyballs and volleyball racks, squash racquets, badminton racquets, shuttlecocks for badminton, racquetball racquets, racquetball string, racquetball grips, soccer balls, softball batting cages, softballs, tennis racquets, tennis racquet string, tennis balls, tennis accessories, namely, tennis ball pick-up devices, court lines, vibration dampeners for racquets, foam balls, grommets, grips, jumbo balls, overgrips, protective strips for racquets, replacement grips, shock traps for racquets, tennis ball holders, shock guards for racquets, tennis hoops, tennis nets, tennis targets; sports protective equipment, namely, forearm pads, elbow pads, hand pads, neck rolls, shoulder pads, chest protectors, knee pads, leg guards, shin guards, thigh pads and throat protectors. 

 

It should be noted that the wording may also be amended to fall into class 18, e.g., “gear bags, namely, all-purpose athletic bags.”

 

In the identification of goods, 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 uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying 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.  See TMEP §1402.04.

 

Continued Final Requirement:  Multiple-Class Application Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Responding to a Final Office Action

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Advisory:  There is no required format or form for responding to an 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 title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/12/2008 FOR

APPLICATION SERIAL NO. 77168844

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77168844&doc_type=OOA&mail_date=20080812 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 8/12/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.