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:

 

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

The applicant must respond to the following requirements.

 

Identification of goods/services – general guidelines

 

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).

 

 

Applicant should use semicolons (;) to separate disparate goods/services.  Misuse of the semicolon may result in further confusion and ambiguity and therefore, further required amendments.  The comma (,) should be used to separate lists of goods in a category, generally following the prefaces “namely,” “consisting of,” “featuring,” or comprised of,” etc.

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.

 

UNACCEPTABLE IDENTIFICATION

 

PLEASE NOTE: Suggestions and explanations are incorporated in bold into the proposed identification below.  Applicant may adopt the following if appropriate.

 

If applicant adopts the recommended identification of goods and services, applicant must remove any brackets from the identification of goods and services and incorporate the bracketed information into the amended description.

 

International Class 25

 

The wording “Clothing, namely, caps, hats, visors, knitted headwear, headbands, bandannas, shirts, T-shirts, tank tops, blouses, sweaters, turtlenecks, pullovers, vests, shorts, pants, slacks, dresses, skirts, baseball uniforms, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, boxer shorts, robes, sleepwear, pajamas, nightshirts, nightgowns, swimwear, clothing wraps, jackets, ponchos, cloth bibs, infant wear, infant diaper covers, cloth diaper sets with undershirt and diaper cover, jumpers, rompers, coveralls, creepers, baby booties, ties, belts, mittens, gloves, wristbands, earmuffs, scarves, footwear, socks, hosiery, slippers, and Halloween and masquerade costumes” in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes.  See TMEP §§1402.01, 1402.03.

 

The following substitute wording is suggested, if appropriate:

 

“Clothing, namely, caps, hats, visors, knitted headwear, headbands, bandannas, shirts, T-shirts, tank tops, blouses, sweaters, turtlenecks, pullovers, vests, shorts, pants, slacks, dresses, skirts, baseball uniforms, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME, e.g., athletic uniforms in the nature of baseball uniforms}, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, boxer shorts, robes, sleepwear, pajamas, nightshirts, nightgowns, swimwear, clothing wraps, jackets, ponchos, cloth bibs, infant wear, infant diaper covers;

 

cloth diaper sets consisting of undershirt and diaper cover;

 

jumpers, rompers, coveralls, creepers, baby booties, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}, ties, belts, mittens, gloves, wristbands, earmuffs, scarves, footwear, socks, hosiery, slippers, and costumes for Halloween and masquerade costumes.”

 

IDENTIFICATION MANUAL AND SCOPE ADVISORIES

 

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.

 

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.

 

APPLICATION PURSUANT TO SECTION 1(b)

 

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 1(b):

 

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

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

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.

 

 

 

 

/Napoleon K. Sharma/

Trademark Examining Attorney

Law Office 107

571-272-3387

 

 

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.