Offc Action Outgoing

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and

(2) Canadian attorneys who represent applicants residing in Canada and who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

37 C.F.R. §10.14; TMEP §602.

Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.04, 605.05(a).

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

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

Search Results

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.

Claim of Ownership

If applicant is the owner of U.S. Registration Nos. 1935272, 2046278, 2494093, and others, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:

Applicant is the owner of U.S. Registration Nos. 1935272, 2046278, 2494093, and others.

Identification of Goods/Services

The wording “Goods of metal (included in this class), namely, signboards, panels, non-luminous and non-mechanical” in the identification of goods in Class 6 is indefinite and must be clarified. TMEP §1402.01. Applicant may adopt the wording “Non-luminous and non-mechanical signboards and panels” in Class 6.

The wording “not coin-operated videogames” in the identification of goods in Class 9 is indefinite and must be clarified. Applicant must specify whether it is a program, software, a disc, etc. TMEP §1402.01.

The wording “electronic publications downloadable” in the identification of goods in Class 9 is indefinite and must be clarified because the syntax is not standard. TMEP §1402.01.

The wording “computer programs and software” in the identification of goods in Class 9 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the purpose or use of the programs.

The wording “protective shields” in the identification of goods in Class 9 is indefinite and must be clarified. TMEP §1402.01. Applicant must specify the use of the shield and what it protects.

The wording “wind socks” in the identification of goods in Class 9 is indefinite and must be clarified because wind socks can be in either Class 9 or Class 28, depending on the purpose. TMEP §1402.01. To remain in Class 9, applicant must specify that the wind socks are for indicating wind direction and intensity.

The wording “luminous advertising” in the identification of goods in Class 9 is indefinite and must be clarified because it does not actually specify any particular good. TMEP §1402.01.

The wording “apparatus for refrigerating” in the identification of goods in Class 11 is indefinite and must be clarified because it does not actually specify any particular good. TMEP §1402.01.

The wording “vehicles” in the identification of goods in Class 12 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the types of vehicles.

The wording “apparatus for locomotion by land, air or water” in the identification of goods in Class 12 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the types of apparatus.

The wording “packaging containers and bags” in the identification of goods in Class 16 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the material composition of the containers.

The wording “printed matter…” in the identification of goods in Class 16 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the subject matter of the printed matter.

The wording “transparencies” in the identification of goods in Class 16 is indefinite and must be clarified because it is too broad. TMEP §1402.01. Applicant must specify the material composition of the transparencies.

The wording “kitchen utensils” in the identification of goods in Class 21 is indefinite. TMEP §1402.01. Applicant must specify the purpose or use of the utensils.

The wording “sportswear” in the identification of goods in Class 25 is indefinite. TMEP §1402.01. Applicant must specify the types of sportswear.

The wording “games and playthings” in the identification of goods in Class 28 is indefinite. TMEP §1402.01. Applicant must specify the types of games and playthings.

The wording “sporting articles included in this class” in the identification of goods in Class 28 is indefinite. TMEP §1402.01. Applicant must specify the types of sporting articles.

Applicant may substitute the following wording, if accurate:

“Class 6: Non-luminous and non-mechanical signboards and panels.”

“Class 9: Magnetic data carriers, namely, video tapes and recording discs; automatic vending machines; video game ___________ {applicant must specify the means, e.g, software, programs, discs, etc.}; machine readable data carriers of all types with programs installed; downloadable electronic publications; computer programs and software for _________; computer game programs; protective clothing for sports purposes, namely, protective spectacles, protective masks, and protective helmets; protective shields, namely, _________ {applicant must specify type of shield; eg. face-protective shields, hand-held shield for use by police, detention centers, correctional facilities and the like}; marker buoys; wind socks for indicating wind direction and intensity; luminous signs; luminous advertising signs.”

“Class 11: Apparatus for refrigerating, namely, ________; refrigerators; refrigerated drink cabinets.”

“Class 12: Vehicles, namely, ________; apparatus for locomotion by land, air, or water, namely, ________; refrigerated trucks; parachutes.”

“Class 16: Paper, cardboard, and goods made from these materials included in this class, namely, paper or cardboard packaging; packaging containers of paper; plastic or paper bags for merchandise packaging; printed matter, namely, leaflets, brochures and folders in the field of ______; photographs; posters; ________ {applicant must specify the material composition, eg., paper, plastic} transparencies; flags of paper; signboards of paper or cardboard; stationery; stickers; instructional and teaching material, namely, _________ in the field of _________; black boards.”

“Class 19: Transportable buildings not of metal.”

“Class 20: Mirrors; furniture and tables made of plastic or metal; display boards and signboards of plastic; containers of plastic.”

“Class 21: Kitchen utensil, namely, ______________; drinking vessels; ice buckets.”

“Class 22: Tarpaulins.”

“Class 24: Textile banners; flags not of paper.”

“Class 25: Clothing and headgear, namely, t-shirts, blouses, sweaters, tops, jackets, vests, anoraks, windbreakers; aprons, caps, hats, headbands, braces, belts, money belts, and sun visors; sportswear, namely, _____________; footwear for sports.”

“Class 28: Games and playthings, namely, ____________; sporting articles, namely, ____________; winter sports equipment, namely, skis and snowboards; special purpose bags for sports equipment, namely, bags for volleyball sets, skis, and surfboards; balls; scale model vehicles; toy vehicles; radio-controlled scale model vehicles; radio-controlled toy vehicles; nets for ball games; paragliders; hang-gliders; skateboards; surfboards; body boards; windsurfing boards; elbow and knee pads.”

“Class 32: Non-alcoholic beverages, namely, sports drinks, energy drinks, and soft drinks.”

“Class 33: Alcoholic beverages, namely, vodka.”

“Class 35: Advertising, namely, promotion of goods and services and of competitive events, namely, competitive events of a sporting nature; arranging of advertising; distribution of goods for advertising purposes; online advertising on a computer network; bringing together for the benefit of others a variety of goods, enabling customers to conveniently view and purchase those goods.”

“Class 41: Entertainment, namely musical performances and radio and television entertainment; sporting and cultural activities, namely the staging of sports competitions; night clubs and discotheque services; organization of fairs and exhibitions for cultural, sporting and educational purposes; publication of electronic journals on-line, electronic desktop publishing, providing on-line electronic publications, game services provided on-line.”

“Class 43: Services for providing food and drinks, namely bar services, cafes, cafeterias, canteens, snack bars, restaurants, self-service restaurants; food and drink catering.”

For assistance with identifying 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.

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.

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.

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.

/hsapp/

Heather A. Sapp

Trademark Examining Attorney

Law Office 108

571-272-8809 (voice)

571-273-8809 (fax)

Heather.Sapp@uspto.gov

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.