UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 1/10/2012

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1045076

 

This Office action is in response to applicant’s communication filed on October 12, 2011.  The applicant has responded to the following refusal(s) and/or requirement(s).   See37 C.F.R. §2.64(a).

(1)   potential Section 2(d) refusal citing Ser. No. 85071546 – acceptable

(2)   Section 2(d) refusal citing Reg. No. 3256611 - unacceptable

(3)   Identification of goods - unacceptable

SECTION 2(D) – FINAL REFUSAL

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3256611.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

The applicant has applied to register “VANQUISH” for Spectacles, eyeglasses and goggles for sports; phonograph records featuring fashion; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; downloadable music files; exposed cinematographic films; exposed slide films; slide film mounts; downloadable image files featuring fashion; recorded video discs and video tapes; electronic publications, namely, books, magazines and manuals featuring fashion recorded on computer media, in International Class 9; Ornaments, namely, necklaces, rings, bracelets, anklets, pierced earrings, earrings, brooches, cuff links, wallet chains; key rings; unwrought and semi-wrought precious stones and their imitations; clocks and watches, in International Class 14; Bags and the like, namely, waist bags, carry-on bags, shoulder bags, small bags, tote bags, handbags, business bags, boston bags, rucksacks; pouches and the like, namely, purses, mobile phone cases, card cases, key cases; handbag frames; purse frames; industrial packaging containers of leather; unfitted vanity cases; umbrellas; walking sticks; canes; metal parts of canes and walking-sticks; walking stick handles; fur, in International Class 18; and Clothing, namely, coats, jackets, sweat shirts, sweaters, vests, t-shirts, shirts, suits, trousers, skirts, underwear, Japanese traditional clothing, swimwear, one-piece dresses, socks and stockings, caps and hats, neckties, mufflers, stoles, bandanas, scarves, gloves; garters; sock suspenders; suspenders; waistbands; belts; shoes and boots, in International Class 25.

 

The cited mark is “VANQUISH” for Time measuring apparatus and instruments, namely, remote control miniprinter timers, electronic and manual timers, photocell timers, starting gate timers, telephone liaison timers, impulse distributor timers, electronic pistol starting timers, manual contactor timers, electric time control switches, and their parts, in International Class 9; and Jewelry; precious stones; timepieces and chronometric instruments, namely, watches, watchbands, chronometers, chronographs for use as watches, electronic stop watches and clocks, in International Class 14.

 

The marks of the parties are identical in all aspects, including standard character marks, sound, commercial impression and meaning.  The goods of the parties, particularly goods in International Class 14, are identical to each others.  Based on these two primary factors, there is a likelihood of confusion.    

 

The applicant argued that the cited mark has co-existed with Reg. No. 2946239, which has been assigned to the applicant.  However, the goods in Reg. No. 2946239 are for clothing in International Class 25.  While clothing and jewelry or timepieces are related such that Reg. Nos. 2946239 and cited mark 3256611 might coexist, however, the relationship between the jewelry and timepieces in this application and Reg. No. 3256611 is very close or identical.  Therefore, because of the similarity of the marks of the applicant and registrant, and the close relationship between the goods of the applicant and registrant, there is a likelihood of confusion.

 

The refusal is continued and made FINAL.

      

IDENTIFICATION OF GOODS – FINAL REQUIREMENT

A requirement was made for an amendment of the identified goods.  The amendment is accepted in part and denied in part.  Therefore, the requirement is continued and made FINAL.

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

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.  See TMEP §1402.01.  Bracketed wordings are suggested deletions and bolded wordings are suggested amendments.

 

International Class 9

Spectacles, eyeglasses and goggles for sports; phonograph records featuring fashion; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; downloadable music files; exposed cinematographic films; exposed slide films; slide film mounts; downloadable image files featuring fashion; recorded video discs and video tapes in the field(s) of <specify subject matter(s)>; electronic publications, namely, books, magazines and manuals featuring fashion recorded on computer media

 

International Class 14

Ornaments, namely, necklaces, rings, bracelets, anklets, pierced earrings, earrings, brooches, cuff links, [wallet chains – too broad for International Class 14]; key rings; unwrought and semi-wrought precious stones and their imitations; clocks and watches

 

International Class 18

Bags and the like, namely, waist bags, carry-on bags, shoulder bags, small hand bags, tote bags, handbags, business bags, boston bags, rucksacks; pouches and the like, namely, purses, [mobile phone cases – too broad for International Class 18], credit card cases, calling card cases, key cases; handbag frames; purse frames; industrial packaging containers of leather; unfitted vanity cases; umbrellas; walking sticks; canes; metal parts of canes and walking-sticks; walking stick handles; fur

 

International Class 25

Clothing, namely, coats, jackets, sweat shirts, sweaters, vests, t-shirts, shirts, suits, trousers, skirts, underwear, Japanese traditional clothing in the nature of kimonos, sash bands for kimono and short overcoat for kimonos, swimwear, one-piece dresses, socks and stockings, caps and hats, neckties, mufflers, stoles, bandanas, scarves, gloves; garters; sock suspenders; suspenders; waistbands; belts; shoes and boots

 

An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.  In addition, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c). 

 

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.

 

PROPER RESPONSE TO FINAL OFFICE ACTION

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

COMMUNICATION

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Sophia S. Kim/

Sophia S. Kim, Esq.

Examining Attorney

USPTO Law 106

571-272-9178

sophia.kim@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 1/10/2012 FOR

SERIAL NO. 79085027

 

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 1/10/2012 (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.