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:

 

INTERNATIONAL REGISTRATION NO. 1165516

 

The assigned examining attorney acknowledges receipt of applicant’s recent response.  Through the response, applicant argues against the refusal of the mark under Section 2(d) of the Trademark Act.  The examining attorney has considered the evidence and arguments and withdraws the refusal resulting from U.S. Registration Nos. 2950218 and 3451018.  However, the refusal of the mark under Section 2(d) of the Trademark Act is maintained and continued with respect to U.S. Registration No. 4264578 for the reasons noted in the Office action dated July 20, 2013 and U.S. Registration No. 2577651 for the reasons noted in the Office action dated February 6, 2014. 

 

In addition, applicant has proposed an amendment to the identification of goods in International Class 11, which is not acceptable for the reasons noted below.  This raises a new issue.

 

In addition, upon further consideration of the amended identification of goods in International Classes 9 and 12, the examining attorney has determined that the wording “parts and fittings for all the aforesaid” is not acceptable for the reasons noted below.  The examining attorney apologizes to applicant for any inconvenience resulting from the error in the prior office action indicating that applicant had properly amended the identification of goods in International Classes 9 and 12. 

           

Identification of Goods-International Classes 9, 11 and 12

In International Class 9, the wording “parts and fittings for all the aforesaid” in the identification of goods is too broad and must be clarified because the wording could include goods which are classified in more than one International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 from one existing international class to another.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

 

Therefore, any modification to this wording must identify goods in International Class 9, the classification specified in the application for these goods.

 

The following substitute wording is suggested, if accurate: 

 

• Portable visibility lighting devices for safety purposes and parts therefor sold as integral components of these goods; reflective safety products, namely, personal reflectors for cyclists for road safety, reflective armbands for cyclists for protection against accident or injury and reflective armbands for cyclists containing LED lights and component parts thereof; protective headgear, namely, crash helmets for cyclists for use by cyclists for protection against accident and injury and component parts thereof; tyre pressure gauges and component parts therefor. (Class 9).

 

In International Class 11, the wording “lamps and lights for cycles, namely, safety lights worn on the body for cycling” in the amended identification of goods is indefinite because “safety lights worn on the body for cycling” refers to goods that are not within the scope of the original identification that was set forth in the application at the time of filing.  The examining attorney submits that “safety lights worn on the body for cycling” are different in purpose and nature from “lamps and lights for cycles.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c).  Further, this amendment is unacceptable because it does not set forth goods in the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  See 37 C.F.R. §§2.71(a), 2.85(d); TMEP §1904.02(c)(iv).

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1402.01(c), 1904.02(b).  The scope of the identification for purposes of permissible amendments is limited by the assigned international class.  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 will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods from one existing international class to another.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

 

Therefore, applicant must amend this wording to identify goods in International Class 11 that are within the scope of the goods in the application as filed.  See TMEP §§1402.07(a), 1904.02(c). 

 

In the alternative, applicant may respond by deleting the unacceptable wording from the identification.  See TMEP §1904.02(c)(iv).  However, once an application has been expressly amended to delete goods, those items generally may not be later re-inserted.  TMEP §1402.07(e).

 

The following substitute wording is suggested, if accurate:  Lamps and lights for bicycles. (Class 11).

 

In International Class 12, the wording “parts and fittings for all the aforesaid” in the identification of goods is too broad and must be clarified because the goods have not been identified by common commercial name and the wording could include goods, which are classified in other International Classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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).

 

Therefore, any modification to this wording must identify goods in International Class 12, the classification specified in the application for these goods.

 

The following substitute wording is suggested, if accurate: 

 

• Bicycles and bicycle parts, namely, {indicate goods by common commercial name, e.g., gear wheels, drive chains, brake shoes, sprockets and frames for bicycles}; foldable bicycles and parts therefor, namely, {indicate goods by common commercial name, e.g., gear wheels, drive chains, brake shoes, sprockets and frames for foldable bicycles}; wheels, rims, spokes, inner tubes, brake pads, seat posts, saddles, pedals, foot grips, namely, bicycle pedal clips and straps, hand grips, namely, handlebar grips, handlebars, all being for bicycles; puncture repair kits for bicycle tyres comprised of tyre repair patches; manually operated pumps for inflating bicycle and cycle tyres; chain guards for bicycles; chain-stay guards for bicycles; bottle cages for bicycles; structural parts functioning as scratch protectors and scratch guards for bicycles; grips for handle bars of bicycles; structural parts of bicycles functioning as mud guards; covers for bicycles in the nature of fitted bicycle covers; bicycle stands; saddle bags for cycles, pannier bags for bicycles, panniers adapted for bicycles; briefcases specially adapted to function as bicycle carriers for carriage by bicycles, rack packs, namely, bicycle racks for vehicles, seat bags, namely, bicycle seat packs, handle bar bags for bicycles, bags specially adapted for bicycle wheels; bags specially adapted for bicycles for carrying water carriers; structural replacement parts and fittings for bicycles and foldable bicycles. (Class 12).

 

For assistance with identifying and classifying goods and 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.

 

An applicant may amend an identification of goods 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 et seq. 

 

Failure to Respond-Partial Refusal Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, then the following goods will be deleted from the application:    

 

• Parts and fittings for all the aforesaid. (Class 9).
• Lamps and lights for cycles, namely, safety lights worn on the body for cycling. (Class 11).
• Parts and fittings for all the aforesaid. (Class 12).

 

The application will then proceed with the following goods only:

 

• Portable visibility lighting devices for safety purposes; reflective safety products, namely, personal reflectors for cyclists for road safety, reflective armbands for cyclists for protection against accident or injury and reflective armbands for cyclists containing LED lights; protective headgear, namely, crash helmets for cyclists for use by cyclists for protection against accident and injury; tyre pressure gauges. (Class 9).
• Bicycles; frames for bicycles; foldable bicycles; wheels, rims, spokes, inner tubes, brake pads, seat posts, saddles, pedals, foot grips, namely, bicycle pedal clips and straps, hand grips, namely, handlebar grips, handlebars, all being for bicycles; puncture repair kits for bicycle tyres comprised of tyre repair patches; manually operated pumps for inflating bicycle and cycle tyres; chain guards for bicycles; chain-stay guards for bicycles; bottle cages for bicycles; structural parts functioning as scratch protectors and scratch guards for bicycles; grips for handle bars of bicycles; structural parts of bicycles functioning as mud guards; covers for bicycles in the nature of fitted bicycle covers; bicycle stands; saddle bags for cycles, pannier bags for bicycles, panniers adapted for bicycles; briefcases specially adapted to function as bicycle carriers for carriage by bicycles, rack packs, namely, bicycle racks for vehicles, seat bags, namely, bicycle seat packs, handle bar bags for bicycles, bags specially adapted for bicycle wheels; bags specially adapted for bicycles for carrying water carriers. (Class 12).
• Luggage for cyclists, namely, tool bags sold empty, courier bags, rucksacks, none being of imitation leather or imitations of leather. (Class 18).
• Articles of clothing, namely, pants, tops, jackets, footwear and headwear for cyclists; arm warmers for cyclists, leg warmers for cyclists, and body warmers for cyclists in the nature of vests for cyclists; cycling tops, cycling shorts, cycling longs, padded undershorts for cyclists; gloves for cyclists; jackets, hooded jackets, gilets, jerseys, tops, shirts, T-shirts, base layers, trousers, over trousers, shorts, suits, knickers, pants, underwear, fingerless gloves, socks, neckwear, neck warmers, scarves, head bands, hoods, hats, caps, beanies, balaclavas, shoes and overshoes, all for cycling. (Class 25).
• Elbow and knee protectors for cyclists. (Class 28).

 

  37 C.F.R. §2.65(a).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Conclusion

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.

 

 

 

/Linda M. Estrada/

Trademark Examining Attorney

Law Office 104

(571) 272-9298

(571) 273-9104 Fax

Linda.Estrada@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.