UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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:

 

THIS IS A FINAL ACTION.

 

This final action addresses Applicant’s May 4, 2009 response.  Please note that the response does not include the claim of prior registrations, as previously requested in the October 31, 2008 office action.  The applicant’s amended filing basis has been noted. 

 

Identification of Goods/Services

 

Applicant’s description of goods/services is unacceptable because it is indefinite.  §1402.1. 

 

 

Applicant must clarify the identification of goods/services as follows.  See TMEP §1402.01.

 

(1)   Replace the wording “or” with definite wording such as “and.”

(2)    Computer software and publications must be clarified.  Please note that publications in class 009 must be electronic and downloadable.

(3)   Please clarify gum guards and gum shields.

(4)   Remove all duplicates

(5)   State that the identity cards are non-magnetically encoded

(6)   State that the engravings are printed.

(7)   Please note that the programs are event.

(8)   Clarify the holders for paper discs

(9)   Indicate the composition of the chopping blocks

(10) Indicate the nature the containers

(11) Move badges of glass to class 026

(12) Portable cold boxes is indefinite and unclear.  Please replace with the common commercial name

(13) Clarify the portable coolers

(14) Clarify the table plates

(15) Please note that tableware is properly clarified in class 008.

(16) Clarify the goods within class 024, 028, 041; see the suggestions provided below

 

 

Suggested Acceptable Identification Of Goods/Services

 

Applicant may adopt the following identification of goods, if accurate:    See TMEP §1402.01.

 

 

Class 009:  Computer games, namely discs and players; video games, namely discs and players; computer games programs; games apparatus, namely amusement games apparatus adapted for use with an external display screen or monitor, video discs featuring leisure, entertainment, sports and football/soccer, program memory cartridges for electronic amusement apparatus for use with an external display screen or monitor, personal digital assistants with satellite communication capability, electric and electronic communication apparatus, namely telephones and radios; CD-ROM players, automatic slot machines; recorded video discs and video tapes featuring leisure, entertainment, sports and football/soccer matters, DVD-ROM players, namely DVD players, programmed-data-carrying electronic DVD-ROMs featuring leisure, entertainment, sports and football/soccer matters, DVD-ROM encoded virtual reality games software; DVD-ROM encoded video game software, encoded video DVDROM drivers, cases adapted for CDs and DVD-ROMs, computer peripherals; computer software for sports or entertainment and leisure matters and football/soccer; computer programs for use in the communications field; computer programs for telecommunications, computers; computer software for personal computers for {specify the purpose and/use or computer game software for personal computers}, electronic downloadable computer software and publications in the nature of {indicate the specific nature of the publication} supplied on-line from databases or from facilities provided on the Internet, including websites, featuring leisure, entertainment, sports and football/soccer, computer software and telecommunications apparatus, namely modems, to enable connection to databases and the Internet, computer software to enable searching of data, computer software for wireless application protocol, wireless application protocol apparatus and instruments, namely cell phones, computer games software and computer games consoles for use with an external display screen or monitor; games apparatus adapted for use with television receivers, namely amusement apparatus, pre-recorded record albums featuring music and songs, blank video tapes and cassettes; blank recordable DVDs, radios, blank smart cards, electronically encoded badges and swipe cards and cards bearing machine readable information, CD-ROMs, electronic apparatus and instruments for the recording, transmission or reproduction of data, sound or images; hi-fi surround sound systems, cameras, camcorders and photographic apparatus and instruments, namely video cameras and disposable cameras, cases for photographic apparatus, calculators; telephones; mobile phones, covers, fascias and cases for mobile phones; accessories for mobile phones, namely charms and lanyards, pre-paid telephone cards, magnetically encoded; sunglasses and cases for sunglasses; spectacles and contact lenses; cases for spectacles and contact lenses, binoculars, radio alarm clocks, namely radios incorporating clocks, magnetically encoded identity cards, magnetically encoded debit cards, screens, namely flat panel display screens, LCD large screen displays, computer screen saver software, electronic scoreboards, magnetically encoded credit cards, computer mouse, computer mouse mats, gum guards and gum shields, namely protective face masks not for medical purposes, gum shields, namely face protectors, protective clothing; protective headwear; protective helmets; protective helmets for use in sports, protective work gloves, face protectors, namely protective face masks not for medical purposes, magnets; decorative magnets; magnetically encoded identification labels, namely tags; active electronic labels containing coded information, namely tags; encoded labels for use in marking products for identification, security or verification, namely magnetically encoded tags; magnetic labels for use in marking products for identification, security or verification; self-adhesive labels, namely encoded magnetic tags.

 

Class 016:  Paper, namely blank paper notebooks and boxes of paper; paper products, namely bond paper and boxes of paper[duplicate must be removed]; stationery, namely paper stationery; stationery products, namely office stationery; printed guides for leisure, entertainment, sports and football/soccer matters; printed teaching materials in the field of entertainment, sports and football/soccer matters; books in the field of leisure, entertainment, sports and football/soccer matters; autograph books; photographs; paper bags; general purpose plastic bags; paper gift bags; wrapping material, namely gift wrapping paper and packing paper; printed periodical publications in the field of entertainment, sport and football/soccer; calendars; photographic albums; greetings cards; Christmas cards; postcards; diaries; address books; personal organizers in paper form; organisers, namely personal organizers and desk top organisers; newspapers; notebooks, notepads; newsletters; leaflets in the field of leisure, entertainment, sports or football/soccer; catalogues in the field of entertainment, sports and football/soccer merchandise; geographical maps; paper mats for beer glasses; portraits; magazines featuring leisure, entertainment, sports and football/soccer matters; match programs, namely event programs for sporting events; match tickets, namely printed tickets for sporting events; brochures about leisure, entertainment, sports and football/soccer matters; stickers; photocards, namely non-magnetically encoded identity cards bearing photographs; photographs; albums, namely albums relating to sports and sporting events; binders; desk top business card holders; cardboard packaging; posters; prints; paintings; engraving plates; print engravings; paper knives; lithographic works of art; paperweights; pens; pencils; pen and pencil cases, erasers, rulers, namely drawing rulers; pen holders and pen clips; drawing instruments; drawing sets comprised of drawing pads and paper, pencils, rulers and templates; crayons; paper flags; book markers; chart pointers, non-electric; stencils; coasters of paper, cheque book and passport holders; table mats and table napkins of paper; removable tattoos, namely temporary tattoos; flags and pennants of paper; document holders; car bumper stickers; paper discs holders for paper discs about road taxes; printed paper labels; adhesive labels; badges of paper, badges of cardboard.

 

Class 020:  Chairs, furniture, namely tables; decorative wall plaques made of plastic or wood, signboards made of plastic or wood; figurines of bone, ivory, plaster, wax or wood; plastic name badges; novelty badges, namely ornamental novelty badges incorrectly classified, should be class 026; wall plaques made of plastic or wood; containers of wood and of plastic, namely packaging containers; curtains of bamboo and decorative bead curtain, hooks, rails, rings, rods, rollers; plastic pennants; statuettes and figurines made of bone, ivory, plaster, wax or wood; mirrors; picture frames; plastic keyrings.

 

Class 021:  Beverage glassware; porcelain figurines and ornaments; earthenware and ceramic articles, namely mugs, cups and plates; earthenware and ceramic figurines; tankards; household and kitchen utensils, namely wood chopping blocks, forks, tongs and turners for barbeques, spatulas, strainers and sieves; household containers, namely containers for household use; domestic household utensils, namely wood chopping blocks, forks, tongs and turners for barbeques, spatulas, strainers and sieves; dishes; tumblers; beer holders, namely beer jugs and mugs; mugs, cups and crockery, namely serving dishes and household containers for food; lunch boxes; combs, non-metal piggy banks, drinking flasks, shoe horns; beer mugs; heated insulated containers for beverages; bottle openers; badges made of glass should be moved to class 026; coasters not of paper and other than table linen; portable cold boxes; coolers, namely ice pails; portable cold boxes, namely portable coolers; corkscrews; drinking glasses; drinking flasks; ice buckets; manual mixers, namely cocktail shakers; pottery, namely mugs, cups and serving dishes; refrigerating bottles sold empty; disposable table plates; tableware holders, namely for knives, forks, spoons similar to boxes specially adapted for the storage of cutlery and flatware in class 008 ; tableware, namely knives, forks, spoons; brushes, namely hairbrushes; shaving brushes; shaving bowls and shaving brush stands; vases; brushes for pets; food and/or drink containers for pets, namely pet feeding dishes.

 

Class 024:  curtain tie backs; lap rugs, towels, beach towels; cloth flags and pennants; bedding, namely bed blankets, bed linen, bed covers, duvet covers; textiles, namely {specify the textiles within class 024 only, e.g. quilts of textile, non-woven textile fabrics}; plastic table covers and table linen, curtains, banners, handkerchiefs of textile, travelling rugs, lap rugs, bath linen, cloth bunting, household linen, place mats of linen, textile piece goods, namely {specify the common commercial name for the goods, e.g. cloth textiles for use in the manufacture of {indicate the field of goods}; cloth coasters; textile napkins; wall hangings of textile; textile labels; adhesive labels; incorrect class, class 016, badges of fabric, looks like class 026 bathmats.incorrect class, class 027. 

 

Class 025:  Clothing, namely trousers, skirts, jackets, coats, blazers, fleece tops and fleece suits, padded jackets, rain jackets, pants and shirts; headwear and footwear; clothing of leather and of imitation leather, namely belts, trousers, jackets and coats; belts; money belts; t-shirts, polo shirts, football shirts and shorts, rugby shirts, jackets, ties, bow ties, pullovers, trousers, socks, shirts, sweaters, sweatshirts, pants, jerseys, pajamas, jumpers, waistcoats and kilts; articles of outer clothing, namely hooded tops and jackets, blazers, coats, fleece tops and fleece suits, padded jackets, rain jackets; knitwear; leisure suits; sports jerseys; sports clothing, namely t-shirts, polo shirts, football shirts, football shorts, replica shirts and replica shorts, sports socks, trousers, sweatshirts and pajamas; tracksuits, headbands, football socks, rugby tops, rugby shorts; skirts, dresses, nightdresses; dressing gowns; sleepwear; underwear; boxer shorts; sports underwear; leotards, swimwear, bathing suits, bikinis, swimming trunks, beach wear, galoshes, anoraks, wetsuits; braces, namely suspenders; hats and caps; baseball caps; sandals, slippers, training shoes, boots, football boots, ski boots; gloves, mittens and scarves; cloth bibs; plastic babies bibs; children's clothing, namely shirts, trousers, jackets, dresses, skirts, socks; baby clothes, namely shirts, trousers, jackets, dresses, skirts, socks; loungewear; wristbands.

 

Class 026:  Ornamental novelty badges; ornamental novelty pin badges; ornamental novelty cloth badges; other ornamental novelty badges not of precious metal or of cloth, rosettes, thimbles, ribbons, buttons; lace and embroidering; artificial flowers; buckles for clothing; heat adhesive ornamental cloth patches; hair ornaments; hair bands; clothing accessories, namely brooches; ornamental novelty glass badges

 

Class 028:  Games, namely electronic games apparatus other than those adapted for use with an external display screen or monitor, interactive DVD action skill game ; board games; card games; playing cards; toy card games; coin-operated video games; electronic game equipment with a watch option; hand-held electronic games other than those adapted for use with television receivers only or for use with external display screen or monitor; hand-held units for playing electronic games other than those adapted for use with television receivers only or for use with external display screen or monitor; stand alone video output game machines; stand alone video game machines; electronic amusement apparatus adapted for use with liquid crystal displays, namely amusement game machines; hand-held games adapted for use with dot matrix crystal displays; jigsaw puzzles; toys and playthings, namely bendable toys, drawing toys, toy vehicles and figures, educational toys in the nature of {specify the nature, e.g. of an illustrated wall map}; toy buses; sporting articles, namely articles for use in the games of football/soccer and rugby, namely {specify the common commercial name of the articles, e.g. spring boards}; rugby balls; balls for sport; footballs; mini-footballs and mini-rugby balls; soccer balls and mini-soccer balls; soft sculpture toys; teddy bears; dice; dominoes; dolls and model plastic toy figurines; flying discs; toy vehicles;duplicate must be removed toy masks; toy building blocks; marbles; toy mobiles; parlor games; baby rattles; spinning tops; darts; balloons; bath toys and toys for use in swimming pools, namely pool rings and arm floats; board games about jokes; conjuring apparatus and instruments and magician sets, namely magic tricks and spinning tricks; gymnastic and body training apparatus; body building apparatus; bar bells; dumb bells; shin guards for athletic use; knee guards for athletic use; elbow guards for athletic use; gloves for games, namely football and soccer; skateboards; roller skates; skating boots with skates attached; skis; surf boards, surf skis, water skis; toy scooters; paragliders; fishing rods, fishing tackle and sportsman fishing bags; golf clubs, golf bags and golf accessories, namely golf club grips, golf club inserts and golf ball markers; bags for boots and for trainers; kites; skittles; paintball guns and paintballs; rocking horses; ornaments for Christmas trees; Christmas crackers; bobsleighs; automatic and coin-operated amusement game machines; confetti; swings, playground equipment, namely slides and climbing frames; remote control toys and playthings, namely cars and airplanes; animated toys and playthings, namely toy animals; toys for pets; parts and fittings for all the aforesaid goods; shin pads for use in sports of football and soccer

 

Class 036:  Insurance agency and brokerage in the field of accident, travel, life, home and health insurance; banking services, credit card services; insurance underwriting in the field of accident, travel, life, home and health insurance; debentures services, namely corporate bonds; financial services, namely financial services in the field of money lending; credit services; loan services; mortgage planning and loan services; trust services, namely investment services; trustee services; consultancy, information and advisory services relating to all of the aforesaid services.

 

Class 041:  Sporting services, namely organization of sporting events relating to football or soccer; organizing of sporting events and activities, namely football or soccer matches and soccer schools and educational demonstrations; recreational services, namely organizing training sessions and workshops relating to football or soccer; information relating to entertainment or sports events, provided on-line from a computer database or the Internet; entertainment, live musical concerts; museum services, namely running of museums; ticket reservation services, namely arranging for ticket reservations for shows, soccer matches and other entertainment events; electronic games services provided by means of the Internet, namely multi-media publishing of games; club services, namely soccer club services; fan club services; presentation of live performances by musical entertainers and groups; presentation of live performances by soccer teams, soccer players and sports personalities; music, book and magazine publishing services; arranging and conducting of seminars in the field of sports, entertainment and football or soccer; physical education, training, practical educational demonstrations, in the field of sports, soccer and the Celtic Football Club; sport camp services; soccer schools, namely soccer camps and soccer educational demonstrations; soccer instruction and training; soccer coaching; education services in the field of sports, soccer and the Celtic Football Club; education relating to sports and leisure activities, organization of sporting events, namely in the field of fitness and soccer; organization of sports competitions; organization of exhibitions for cultural or educational purposes, film production; production of radio and television programs; entertainment in the nature of live performances by sports personalities; rental of stadium facilities and sports equipment; photographic services, namely photographic reporting; lottery services; consultancy, information and advisory services relating to all of the aforesaid services.

 

Please Review The ID Manual For Guidance

 

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.

 

Scope Advisory

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

Classification of Goods

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 16, 20, 21, 24, 25, 26, 28, 36, and 41.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

Multiple Class Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 44(d):

 

(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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Applicant Must Claim Prior Registration(s)

The following claim of ownership is added to the record:

 

            Applicant is the owner of U.S. Registration Nos. 2113293 and 2013996.

See 37 C.F.R. §2.36; TMEP §812.

 

 

 

 

Proper Response

 

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).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/Nakia D. Henry/

Trademark Attorney (Law Office 111)

United States Patent and Trademark Office

Phone:  (571) 272-7208

Fax:    (571) 273-7208

 

 

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.