UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 3/12/2012

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On March 12, 2012, the trademark examining attorney and Eric Fingerhut discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

 

IDENTIFICATION OF GOODS

 

 

The identification of goods in Classes 14, 18, and 25 is unacceptable as indefinite because the some of the wording in the identification of goods must be clarified because it is either too broad and could include goods in other international classes, or is misclassifed.  See TMEP §§1402.01, 1402.03.  The wording "strap for keyholders" is indefinite and possibly misclassified.  Key holders are classified by metal composition.  Accordingly, the particular material composition of the key holders must be specified, and straps as parts of these goods will be classified in Classes 6, 14 and/or 20, as applicable.   The wording "keyholders with plushie" is also indefinite and possibly misclassified. As previously indicated, an ID for "key holders" requires specification of the particular material composition for proper classification. The applicant should specify material composition and reclassify if necessary, or delete this wording.  The term "furs" is broad and indefinite and requires clarification for proper classification. While "fur" is acceptable in Class 18, the term "furs" typically refers to Class 25 clothing goods (e.g., coats, stoles) made of fur. Accordingly the term "furs" must be clarified, either by using the term "fur" in Class 18 or specifying the clothing in Class 25.  The goods described as "outer-clothing" and "helmets clothing" are indefinite.  Please list the clothing items by common commercial name, or delete these terms.  "Handkerchiefs" are classified in Class 24, and as such, Class 24 must be added to the application or the term must be deleted.  Suggestions and explanation is incorporated into the identification proposed below.  The Applicant may substitute the following wording, if accurate: 

 

 

JEWELRY, NAMELY, MINIATURE HELMETS OF PRECIOUS METAL; STRAP FOR PRECIOUS METAL KEYHOLDERS; STRAP FOR TIMEPIECE; KEYHOLDERS OF PRECIOUS METALS WITH MASCOT; BADGES OF PRECIOUS METAL; PINS OF PRECIOUS METAL; PINS; EARRINGS; TIEPINS; NECKLACES; BRACELETS; ANKLE BRACELETS; FINGER RINGS; LOCKETS; CUFF LINKS; WATCHES AND CLOCKS; KEY HOLDERS OF PRECIOUS METAL WITH PLUSHIE.  IC 14

 

 

BAGS, NAMELY, SHOULDER BAGS, BRIEFCASES, SUITCASES, TRUNKS, HANDBAGS, BOSTON BAGS, BACKPACKS, SPORTS BAGS; POUCHES, NAMELY, CHARM BAGS, CARD CASES, SHOPPING BAGS, PURSES, KEY CASES, WALLETS, COMMUTATION-TICKET HOLDERS, BUSINESS CARD CASES; (Based on Intent to Use) HELMET BAGS; CD CASES; STRAPS, NAMELY, SHOULDER STRAPS, STRAPS FOR LUGGAGE, STRAPS FOR MOBILE PHONES; UMBRELLAS, VANITY CASES SOLD EMPTY; CANES; SADDLES; FUR; ANIMAL HIDES.  IC 18

 

 

HANDKERCHIEFS.  IC 24

 

 

CLOTHES, NAMELY, ACKETS, COATS, SWEATERS, T-SHIRTS, SHIRTS FOR SUITS, SPORTS SHIRTS, POLO SHIRTS, BLOUSES, NIGHT WEARS, UNDERWEAR, SWIM WEARS, SWIMMING CAPS, APRONS, SOCKS AND STOCKINGS, SHOWLS, SCARVES, GLOVES AND MITTENS, NECKTIES NECKERCHIEFS, BANDANAS, MUFFLERS EAR MUFFS, HOODS, NIGHTCAPS; (Based on Intent to Use) HEADGEAR, NAMELY, CAPS AND HATS; SOCKS; FOOTWEAR, NAMELY, SHOES AND BOOTS; BELTS; CLOTHES AND FOOTWEAR FOR SPORTS, NAMELY, GOLF SHOES, SOCCER SHOES, SKI BOOTS, GYMNASTIC SHOES, TENNIS SHOES, CLIMBING BOOTS, BASKETBALL SNEAKERS, VOLLEYBALL SHOES, BASEBALL SHOES, RUGBY SHOES; APRONS; MUFFLERS; SCARVES; TIES; NECKERCHIEFS; BANDANAS.  IC 25

 

See TMEP §§1402.01, 1402.03.

 

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes.  37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

 

 

Although identifications of goods may be amended to clarify or limit the goods/services, adding to or broadening the scope of the goods/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 that are not within the scope of the goods/services set forth in the present identification. 

 

In the identification, the applicant must use the common commercial names for the goods and/or services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Moreover, the identification of goods must also be specific and all-inclusive; therefore, applicant should refrain from using such terms such as “including” or “and the like” and replace this wording with "namely" followed by the good and/or services listed by their common commercial names. 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

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.

 

Response Guidelines:

There is no required format or form for responding to this 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 following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

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

The response must be signed 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, etc.).  TMEP §§712 et seq.

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.

 

 

 

/Sanjeev K. Vohra/

Trademark Examining Attorney

Law Office 110

571.272.5885 -  Work

571.273.5885 - Fax

sanjeev.vohra@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/12/2012 FOR

SERIAL NO. 77669178

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 3/12/2012 (or sooner if specified in the office action).

 

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.

 

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

 

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