Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/717525

 

This letter responds to the applicant’s correspondence dated August 15, 2006.

 

The applicant (1) proposed an amended identification of goods; and, (2) argued against the refusal to register the mark under Section 2(d) with regard to Reg. Nos. 1636750, 2419717 and 2481185.  No. 2 is accepted and made part of the record.

 

The refusal to register the mark under Section 2(d) with regard to Reg. Nos. 1636750, 2419717 and 2481185 is withdrawn.

 

The requirement for clarification of the identification of goods is maintained and made final in part.

 

Identification of Goods – Partial final Refusal

The wording “All purpose athletic bags, daypacks, backpacks, tote bags, all purpose sports bags, duffel bags, book bags, school bags, shoulder bags, hard-sided and soft-sided carry-on bags and gym bags,” in the proposed amended identification is accepted and made part of the record.  However, the wording “(BAGS, HARD AND SOFT COVERED CASES, RUCKSACKS, HOLDALLS, BACKPACKS WITH ROLLING WHEELS, BACKPACKS WITHOUT ROLLING WHEELS, BELT PACKS, POCKETS, TOTE BAGS AND POUCHES, ALL DESIGNED FOR CARRYING PHOTOGRAPHIC, CINEMATOGRAPHIC, VIDEOGRAPHIC, OPTICAL, AUDIO, ELECTRONIC AND COMPUTER EQUIPMENT; FILM ORGANIZERS; CELL PHONE POUCHES; WAIST HARNESSES AND SHOULDER HARNESSES DESIGNED FOR USE WITH THE FOREGOING GOODS;)” in the proposed amended identification remains unacceptable because it includes parentheses, it does not identify all of the goods by the common commercial name, and it encompasses goods classified in several different classes.  Applicant must amend the identification of goods to delete the parentheses, and to specify the common commercial or generic name, and correct classification for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:

 

International Class 18

All purpose athletic bags, daypacks, backpacks, tote bags, all purpose sports bags, duffel bags, book bags, school bags, shoulder bags, hard-sided and soft-sided carry-on bags and gym bags, backbacks with rolling wheels, backpacks without rolling wheels, rucksacks, and waist packs.

 

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.

 

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.

 

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 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 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.

 

PLEASE NOTE:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

Options

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  “(BAGS, HARD AND SOFT COVERED CASES, RUCKSACKS, HOLDALLS, BACKPACKS WITH ROLLING WHEELS, BACKPACKS WITHOUT ROLLING WHEELS, BELT PACKS, POCKETS, TOTE BAGS AND POUCHES, ALL DESIGNED FOR CARRYING PHOTOGRAPHIC, CINEMATOGRAPHIC, VIDEOGRAPHIC, OPTICAL, AUDIO, ELECTRONIC AND COMPUTER EQUIPMENT; FILM ORGANIZERS; CELL PHONE POUCHES; WAIST HARNESSES AND SHOULDER HARNESSES DESIGNED FOR USE WITH THE FOREGOING GOODS;).”  The application will proceed forward for the remaining goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

Telephone 571-272-9155

Facsimile 571-273-9116

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.