Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 3/14/2010

 

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi.  The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

 

The undersigned has reviewed the response filed on January 26, 2010, and determined the following.

 

The following requirement(s) has been satisfied:  Claim of Ownership of a Prior Registration.  TMEP §§713.02, 714.04. The following refusal(s)/requirement(s) is/are CONTINUED AND MAINTAINED: 1) Likelihood of Confusion Refusal as it pertains to Registration No. 3334429 2) Identification of Goods Requirements and 3) Request for Information

 

PRIOR PENDING APPLICATIONS

 

Action on this application is suspended pending the disposition of:

 

- Application Serial No(s). 77/423365, 77/423374, 77/586641, 77/977191, 77/977192 and 78/276782

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application(s) was sent previously.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

IDENTIFICATION OF GOODS REQUIREMENTS

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The remainder of the identification as amended in the response of January 26^th is acceptable.

 

International Class 18:

 

The wording “hydration bags” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. Applicant may adopt the following identification of goods, if accurate:  Personal fluid hydration systems comprising a fluid reservoir, a delivery tube, a mouthpiece and a carrying pack, in International Class 21.  See TMEP §1402.01.

 

International Class 25:

 

The wording “windbreakers” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 941015.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). Therefore, applicant must amend the identification of goods by deleting the wording “windbreakers” and substituting the common commercial or generic name for the goods. 

 

The wording “outwear” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.

 

International Class 28:

 

Applicant classified the goods and/or services “helmets” in International Class 28; however, the correct classification is International Class 9.  Applicant must either delete these goods and/or services or add International Class 9 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b). In addition, applicant must amend the identification to specify the types of helmets.

 

Applicant must delete the comma between “skateboard” and “wheel assemblies” so that it is clear that the “wheel assemblies” are skateboard items. 

 

The wording “parts and fittings for any thereof” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. Applicant may amend the identification to specify that the goods are replacement parts for skateboards.

 

Applicant must also clarify that its “bearings,” “mounting hardware,” “grip tape,” “riser pads,” and “nuts and bolts” are all for use with skateboards so that they remain in Class 028.

 

Applicant must clarify the words “accessories in the nature of protective padding for skateboard” in the identification of services by amending the identification to specify whether the goods are intended for the sport of “skateboarding.”  See TMEP §1402.01.

 

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.

 

 

 

 

/Khanh M. Le/

U.S. Patent & Trademark Office

Law Office 113

(571) 272-9435

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77744633) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 3/14/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77744633&doc_type=SUL&mail_date=20100314 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 3/14/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.