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: 3/21/2013

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1139460

 

This Office action is in response to applicant’s communication filed on February 27, 2013.  Applicant’s amended mark description is accepted and made of record.  Applicant’s amended identification is made of record, but remains indefinite as indicated below.  Therefore, the requirement for a definite identification of goods and services is continued and made FINAL.

 

Identification of Goods and Services

The identification of goods needs clarification in several respects.  First, the word “kits” in International Class 3 in the identification of goods is indefinite and must be clarified.  See TMEP §§1401.05(a), 1402.01, 1402.03.  However, the international classification for the wording “kits” cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(d).  Further, any amendment to the identification must be within the scope of the goods and/or services listed in the request for extension of protection to the United States.  See 37 C.F.R. §§2.71(a), 7.25(a); TMEP §§1402.06(b), 1904.02(b).  Therefore, applicant must amend the identification to identify more clearly the type of kits and the principal components within International Class 3, the classification assigned by the International Bureau.  See TMEP §1401.05(a).

 

For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first.  Generally, the international class of the kit will be determined by the international class for the majority of items in the kit.  Thus, the majority of the items must be classified in International Class 3.

 

If no items in a shared-theme kit are more dominant than any other item, the international class for the kit itself will be determined by the first-listed item after the wording “comprising.”  Thus, the first-listed item must be classified in International Class 3.

 

Second, applicant must clarify the identification of goods by indicating that the “chains” and “pins” in International Class 14 are jewelry.  See TMEP §1402.01.

 

Third, the wording “net bags for shopping, bags,” “card cases,” “kid,” “shopping bags,” in International Class 18, and “beach clothes,” “clothing for gymnastics,” “knitwear,” “clothing of imitation leather, clothing of leather,” “outer clothing,” “ready-made clothes,” “headgear for wear,” in International Class 25 in 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. 

 

Fourth, applicant should replace the “/” in “rucksacks/backpacks,” in International Class 14 and “singlets/sports jerseys” in International Class 25 with a comma to make this wording definite.

 

Fifth, applicant must clarify the identification of goods by indicating that the “vanity cases” in International Class 18 are sold empty, in order to make this wording definite and properly classified.  See TMEP §1402.01.

 

The wording in International Class 35 is acceptable without further amendment.

 

Applicant may adopt the following, if accurate:

 

“Bleaching preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps for cosmetic use; perfumery, perfumes, eau de Cologne, incense, essential oils, cosmetics, cosmetic creams, lotion for cosmetic purpose, cosmetic kits comprised of [indicate cosmetics, e.g., lipstick, lip gloss], cosmetic pencils, make-up, make-up powder, eyebrow, eyebrow pencils, mascara, lipsticks, lip glosses, nail care preparations, nail art stickers, hair lotions; dentifrices,” in International Class 3.

 

“Precious metals and their alloys; goods made of precious metal or plated therewith, namely bracelets, brooches, jewelry chains, watch chains, charms, chronograph watches, tie clips, earrings, jewellery, key rings, cufflinks, lockets, necklaces, pins being jewelry, rings, watch bands, watches, wristwatches; jewellery; precious stones; horological and chronometric instruments,” in International Class 14.

 

“Leather and imitation leather; goods made of leather and imitation leather, namely attaché cases, garment bags for travel, textile net bags for shopping, bags, namely, [specify type of bag, e.g., athletic bags, clutch bags], briefcases, [specify type of card case, e.g., business, credit] card cases, chain mesh purse, handbags, key cases, kid, namely, [specify by common commercial name in International Class 18 – wording too vague to suggest definite identification], moleskin, purses, rucksacks, backpacks, school bags, textile shopping bags, traveling bags, traveling trunks, suitcases, trunks, umbrellas, valises, vanity cases sold empty; animal skins and hides; bags, namely school bags, shopping bags, travelling bags, rucksacks, backpacks, handbags; trunks and suitcases; umbrellas, parasols and walking sticks, whips, harnesses and saddlery,” in International Class 18.

 

“Clothing, namely beach clothes, namely, beachwear, belts, bodices, clothing for gymnastics, namely, [specify by common commercial name in International Class 25, e.g., gymnastic shoes], coats, collars, combinations, corselets, corsets, cuffs, wristbands, detachable collars, dresses, Gloves, dressing gowns, hoods, hosiery, stuff jackets, jackets, jerseys, jumper dresses, knitwear, namely, [specify by common commercial name in International Class 25, e.g., knit shirts, knit pants], layettes, clothing of imitation leather, namely, [specify by common commercial name in International Class 25, e.g., pants, hats], clothing of leather, namely, [specify by common commercial name in International Class 25, e.g., pants, hats], leggings, muffs, neckties, outer clothing, namely, [specify by common commercial name in International Class 25, e.g., coats, jackets], overalls, overcoats, pants, drawers, pelerines, pelisses, pullovers, ready-made clothes, namely, [specify by common commercial name in International Class 25, e.g., shirts, pants], scarves, scarfs, shirts, short-sleeve shirts, singlets, sports jerseys, skirts, slips, socks, stockings, suits, sweaters, tee-shirts, tights, togas, trousers, underpants, underwear, shirt yokes; Footwear, namely beach shoes, boots, esparto shoes or sandals, half boots, heels, lace boots, sandals, shoes, slippers, sports shoes; Headgear, namely bandanas, berets, hats, paper hats, headbands, headgear for wear, namely, [specify type in International Class 25, e.g., hats, caps],  top hats,” in International Class 25.

 

“Advertising; business management; business administration; providing office functions; business management advisory services relating to franchising, business management of a retail establishment for others, business management of retail sales outlets,” in International Class 35.

 

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 §1904.02(c)(iv).  In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).

 

In addition, in a Section 66(a) application, 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), 1402.01(c).  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); TMEP §§1401.03(d), 1402.01(c). 

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Advisory: Partial Abandonment

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  “cosmetic kits,” in International Class 3, “chains,” “pins,” in International Class 14, “net bags for shopping, bags,” “card cases,” “kid,” “rucksacks/backpacks,” “vanity cases,” “shopping bags,” in International Class 18, and “beach clothes,” “clothing for gymnastics,” “knitwear,” “clothing of imitation leather, clothing of leather,” “outer clothing,” “ready-made clothes,” “singlets/sports jerseys,” “headgear for wear,” in International Class 25.  The application will then proceed with the following goods and/or services only:  “Bleaching preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps for cosmetic use; perfumery, perfumes, eau de Cologne, incense, essential oils, cosmetics, cosmetic creams, lotion for cosmetic purpose, cosmetic pencils, make-up, make-up powder, eyebrow, eyebrow pencils, mascara, lipsticks, lip glosses, nail care preparations, nail art stickers, hair lotions; dentifrices,” in International Class 3; “Precious metals and their alloys; goods made of precious metal or plated therewith, namely bracelets, brooches, watch chains, charms, chronograph watches, tie clips, earrings, jewellery, key rings, cufflinks, lockets, necklaces, rings, watch bands, watches, wristwatches; jewellery; precious stones; horological and chronometric instruments,” in International Class 14; “Leather and imitation leather; goods made of leather and imitation leather, namely attaché cases, garment bags for travel, briefcases chain mesh purse, handbags, key cases, moleskin, purses, school bags, traveling bags, traveling trunks, suitcases, trunks, umbrellas, valises; animal skins and hides; bags, namely school bags, shopping bags, travelling bags, handbags; trunks and suitcases; umbrellas, parasols and walking sticks, whips, harnesses and saddlery,” in International Class 18; “Clothing, namely belts, bodices, coats, collars, combinations, corselets, corsets, cuffs, wristbands, detachable collars, dresses, Gloves, dressing gowns, hoods, hosiery, stuff jackets, jackets, jerseys, jumper dresses, layettes, leggings, muffs, neckties, overalls, overcoats, pants, drawers, pelerines, pelisses, pullovers, scarves, scarfs, shirts, short-sleeve shirts, skirts, slips, socks, stockings, suits, sweaters, tee-shirts, tights, togas, trousers, underpants, underwear, shirt yokes; Footwear, namely beach shoes, boots, esparto shoes or sandals, half boots, heels, lace boots, sandals, shoes, slippers, sports shoes; Headgear, namely bandanas, berets, hats, paper hats, headbands, top hats,” in International Class 25; and “Advertising; business management; business administration; providing office functions; business management advisory services relating to franchising, business management of a retail establishment for others, business management of retail sales outlets,” in International Class 35.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Response Guidelines

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements;

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).

 

 

 

 

 

 

/Matt Einstein/

Matt Einstein

Trademark Examining Attorney

Law Office 115

571-272-8251

matt.einstein@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/21/2013 FOR U.S. APPLICATION SERIAL NO. 79121845

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 3/21/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.