Offc Action Outgoing

This letter responds to the applicant’s communication filed on February 25, 2010. The applicant (1) argued against the refusal under Section 2(d) and (2) amended the identification of goods in International Classes 008, 009, 011, and 025.

The following refusals/requirements are maintained:

(1) Section 2(d) – Likelihood of Confusion Refusal (with respect to International Classes 011 and 012)

(2) Identification of Goods – International class 008

The applicant’s identification of goods remains indefinite because it is broad and includes goods in multiple international classes. Applicant may adopt the following identification of goods, if accurate:

International Class 006: Toolkeepers, namely, organizer trays for holding hand-operated bicycle tools made of metal sold empty; universal toolcases for holding hand-operated bicycle tools made of metal.

International Class 020: Toolkeepers, namely, organizer trays for holding hand-operated bicycle tools not made of metal sold empty; universal toolcases for holding hand-operated bicycle tools not made of metal.

International Class 008: Hand-operated tools, namely, hand-operated bicycle tools, namely, spoke cutters, spoke wrenches, grease guns, headset tools, namely, hand tools for assembling headsets, namely, headset assembly tools, hand tools for removing headset cups, namely, headset cup removers, hand tools for removing headset cones, namely, headset cone removers, headset cone mounting tools, ahead claw mounting tools, bicycle tube cutters, cog brushes, sprocket removers, freewheel removers, crankset removers, wrenches for bicycles, namely, chain checkers, riveting tools, bottom bracket tools, cable cutters, pedal wrenches, cone adjusting wrenches, head keys, torque wrenches, Allen keys, three-arm wrenches, universal pliers, tire levers, wheel truing stands, bicycles workstations, namely, manually operated bicycle lifts, , hand-operated chain cleaners, and mini folding toolsets primarily comprised of Allen keys and also containing flat screwdrivers, Philips screwdrivers, chain rivet extractors, wrenches, spoke adjusters, and tire levers.

(3) Identification of Goods – International Class 012

The applicant’s identification of goods remains indefinite because portions of the identification are still unclear. Applicant may adopt the following identification of goods, if accurate:

International Class 012: Bicycles, and structural parts and fittings for bicycles, namely, bicycle saddles, bicycle seat pillars, quick releases for bicycle seat pillars, seat tube clamps, saddle clamps, seat post adapters, chain rings for bicycle chains, axles, BB cups, ball retainers, axle bolts, axle nuts, crank cotter pins, spokes, spoke nipples, chains, connecting links, chain links, pedals, hubs, coaster brake hubs, disc brake hubs, hub cassette bodies, quick releases for hubs, axle pegs, indicator chains, bicycle chain adjusters, bicycle chainwheel sets, namely, crankarms and chainblades sold as a unit, cranks, bottom bracket sets, bicycle brakes, disc brakes, brake arches, bicycle brake pads, brake levers, bicycle brake cables, bicycle brake shoes, brake cable hangers, brake straddle cables, cable bridges, o-rings for cables, rubber dust covers, derailleur cables, inner cables, outer casings for cables, cable end caps, cable covers, rims, wheelsets, bicycle headsets, spacers for bicycle headsets, adapters for bicycle headsets, forks, suspension forks, handlebars, handle bar stems, adapters for handlebar stems, spacers for handlebar stems, bicycle inner tubes, bicycle tires, rim tape, rear derailleurs, front derailleurs, freewheels, cassette freewheels, shift levers, trigger control levers, frames, sprockets, cassette sprockets, bicycle nets, bicycle baggage nets, bicycle carrier bags, handlebar bags, bicycle seat bags, saddle bags for bicycles, bicycle frame-mounted triangle bags, air horns, bicycle horns, bicycle locks, bicycle child and baby seats and replacement brackets therefor, chain guards, bicycle rear view mirrors, anti chain drop clamps, cleat sets, toe clips, pedal straps, hub cleaners, chain stay protectors, water bottle cages, replacement brake shoes, mudguards, dress guards, stays for mudguards, bar ends, grips, handlebar tape, handlebar plugs, bells, side stands, steering dampers, bicycle lifts, bicycle display stands, bicycle stabilizers, wire baskets adapted for bicycles, wicker baskets adapted for bicycles, cargo carriers, pumps, CO2 pumps and cartridges, pump brackets, replacement pump heads, pump adapters, ball needles for tire pumps, tubeless kits composed of rim tape, bicycle valves, bicycle valve extensions, and bicycle valve adapters, bicycle tire valves, bicycle tire valve extensions, bicycle tire valve adapters, bicycle tire valve cap sets, derailleur guards, tandem tow bars, bicycle trailers, roll exercise trainers, exchange drop outs for frames, bicycle rear shock absorbers, hooks for rear derailleurs, pulleysets, front spacers for freewheels, elastic straps for bicycles, bicycle repair kits composed of tire levers, patches for bicycle inner tubes, bicycle valve tubes, and metal scuffers.

The following requirements have been satisfied: (1) Identification of Goods – International Class 009; (2) International Class 011. TMEP §§713.02, 714.04.

Requirement: Identification of Goods – International Class 025

The identification of goods is indefinite and must be clarified because it includes broad wording and goods in other international classes. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

International Class 009: Protective clothing, namely, safety vests;

International Class 025: Clothing, namely, arm warmers, leg warmers, knee warmers, bicycle gloves, rain ponchos, waistcoats, pants, trousers, bicyclist's jerseys; footwear, namely, shoes and shoe covers for use when wearing shoes; headgear, namely, bandanas, headbands, caps.

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.

Advisory: Multiple Class Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods 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 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).

Response Guidelines

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 of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

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.

/Seth A. Rappaport/

Seth A. Rappaport

Trademark Examining Attorney

Law Office 103

Phone: (571) 270-1508

Fax: (571) 270-2508

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.