UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79143102
MARK: IKONIC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Ikonic Saddlery
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1193378
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3216228 (as pertaining to International Class 006); 3042401, 3632763, 4173870, 4315592, and 4434784 (as pertaining to International Class 009); 3773570 (as pertaining to International Classes 018 and 025); and 4017681 and 4419013 (as pertaining to International Class 025). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
As Pertaining to Applicant’s Goods in International Class 006
Applicant’s mark IKONIC is nearly identical to the cited mark IKONICS. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
The only difference is that the cited mark has the letter “s” at the end, and is therefore the plural version of applicant’s mark. Trademarks and/or service marks consisting of the singular and plural forms of the same term are essentially the same mark. See Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL). The marks are otherwise identical in appearance, pronunciation, and any connotation they may have as used in conjunction with the goods in International Class 006.
Applicant’s identification of goods for International Class 006 comprises the class heading for International Class 006, and therefore is broadly worded and subsumes registrant’s goods for “Signs, namely, non-electric and non-mechanical metal signs; and sign letters and numbers, namely non-electric and non-mechanical metal sign letters and numbers; signage substrates and graphic arts substrates, namely metal sheets and panels for use in the manufacture of etched signs.” The parties’ goods are therefore identical.
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services “travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Further, the application use(s) broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
Because applicant’s mark is nearly identical to the cited mark for identical goods, such that consumer confusion is likely as to the source of the goods, registration as to the goods in International Class 006 is refused.
As Pertaining to Applicant’s Goods in International Class 009
The following marks with corresponding identifications of goods are cited against the applied-for mark as pertaining to International Class 009:
U.S. Registration No. 3632763 for the mark “ICONIC” in typed form for the goods “Reproductions of vintage loudspeakers; loudspeaker component parts namely loudspeaker dividing networks, loudspeaker enclosures, audio transformers, horns, transducers, and raw frame drivers; loudspeaker accessories, specifically cables, brackets, trim, mounting hardware, binding posts, and connectors; loudspeaker systems comprising one or more component loudspeakers, foregoing loudspeaker component parts, and/or foregoing accessories; and instruction manuals sold therewith as a unit” in International Class 009.
U.S. Registration No. 3042401 for the mark “IKONIK” in stylized form for the goods “Computer chassis; Computer heat sinks; Computer keyboards; Computer mouse; Computer peripheral devices; Notebook computer cooling pads; Computer hard drive enclosures; Blank digital storage media; Blank electronic storage media” in International Class 009.
U.S. Registration No. 4173870 for the mark “ICONIC BASEBALL” in standard characters for the goods “Computer game programs” in International Class 009.
U.S. Registration No. 4315592 for the mark “ICONIK IMMEDIATE KNOWLEDGE” in stylized form for the goods “Computer software, namely, an integrated technology software platform, providing single or multiple views of study information for use in relation to pharmaceutical, biotechnology, medical devices including clinical development and clinical trials from compound selection to phase I-IV clinical studies” in International Class 009.
U.S. Registration No. 4434784 for the mark “ICONIC” in standard characters for the goods “Computer software and hardware for retail point of sale, mobile, Internet, and cloud-based transactions, inventory tracking, logistics, and accounting” in International Class 009.
Applicant’s mark “IKONIC” in standard characters is nearly identical to all cited marks. The marks are all variants of the word “iconic” where the letter “C” may or may not be substituted with the letter “K” resulting in deliberately misspelled versions of “ICONIC”. However, these slight differences in spelling will not adequately differentiate the marks, as they are still highly similar in appearance, and are identical in pronunciations. Further, any connotation the term “iconic” may have as used upon the parties’ goods in International Class 009 will be the same.
The additional term “baseball” as used in the mark for U.S. Registration No. 4173870 will not adequately differentiate the parties’ marks to obviate the refusal. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for an applicant’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii). In the cited registration, the term “baseball” has been disclaimed as merely descriptive, and will be understood to merely describe the goods and will have little commercial significance.
The additional term “IMMEDIATE KNOWLEDGE” as used in the mark for U.S. Registration No. 4315592 will not adequately differentiate the parties’ marks to obviate the refusal. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. In this instance, the phrase “immediate knowledge” as appearing in the cited mark is miniscule in size and located below the significantly more dominant portion “ICONIK”. Therefore, the overall commercial impressions of this cited mark and applicant’s mark are highly similar.
In comparing applicant’s goods to the various registrants’ goods, applicant’s identification of goods for International Class 009 comprises the class heading for International Class 009, and therefore is broadly worded and subsumes the various registrants’ goods in International Class 009, as listed above. The parties’ goods are therefore identical.
With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services “travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Further, the application use(s) broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in the various registrants’ more narrow identifications. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
Because applicant’s mark is nearly identical to the cited mark for identical goods, such that consumer confusion is likely as to the source of the goods, registration as to the goods in International Class 009 is refused.
As Pertaining to Applicant’s Goods in International Classes 018 and 025
Applicant’s mark “IKONIC” in standard characters is nearly identical to the cited mark “ICONIC” in standard characters. The only difference is that applicant uses the letter “K” in lieu of “C” to deliberately spell “iconic” as “ikonic”. The appearance of the marks is otherwise the same. The pronunciations of the marks are identical. Further, any connotation the term “iconic” has in regards to the goods in International Class 018 and as applied to clothing goods is identical. The marks are therefore confusingly similar.
In comparing the parties’ goods, Applicant's identification of goods for International Class 018 comprises the class heading for International Class 018, and therefore is broadly worded and subsumes registrant's goods for "Leather goods, namely, handbags, shoulder bags, card cases, purses, coin pouches, zipper pouches, cosmetic cases sold empty, photo pouches with key chains." The parties' goods are therefore identical.
With respect to applicant's and registrant's goods, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services "travel in the same channels of trade to the same class of purchasers." In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Further, the application use(s) broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant's more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
Further, in comparing the parties’ goods in International Class 025, applicant’s goods for “Riding clothes, riding hats, riding shoes, riding gloves, riding boots, riding coats, riding breeches” include shoes and boots, which are identical to registrant’s goods for “Shoes.” To the extent applicant’s clothing goods are not shoes, the registration(s) does not contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
Because applicant’s mark is nearly identical to the cited mark for identical and highly related goods, such that consumer confusion is likely as to the source of the goods, registration as to the goods in International Classes 018 and 025 is refused.
As Pertaining to Applicant’s Goods in International Class 025
The following marks with corresponding identifications of goods are cited against the applied-for mark as pertaining to International Class 025:
U.S. Registration No. 4017681 for the mark “ICONIC” in standard characters for the goods “Men's and women's golf and athletic apparel, namely, golf pants, skirts, shorts, warm-up pants and sweatshirts, vests, t-shirts and collared knit shirts, golf caps, knit caps and visors, wind and water-resistant sports jackets” in International Class 025.
U.S. Registration No. 4419013 for the mark “IKONIK” in standard characters for the goods “LADIES' APPAREL, NAMELY, PANTS, SHIRTS, JACKETS, DRESSES, BLOUSES, COATS, FOOTWEAR, HEADWEAR AND ACCESSORIES, NAMELY, SCARVES, GLOVES AND BELTS” in International Class 025.
Applicant’s mark “IKONIC” in standard characters is nearly identical to the two cited marks. The marks are all variants of the word “iconic” where the letter “C” may or may not be substituted with the letter “K” resulting in deliberately misspelled versions of “ICONIC”. However, these slight differences in spelling will not adequately differentiate the marks, as they are still highly similar in appearance, and are identical in pronunciations. Further, any connotation the term “iconic” may have as used upon the parties’ goods in International Class 025 will be the same.
In comparing the parties’ goods in International Class 025, applicant’s goods for “Riding clothes, riding hats, riding shoes, riding gloves, riding boots, riding coats, riding breeches” overlap with and/or are highly related to the registrants’ various clothing. The goods in U.S. Registration No. 4017681 include “athletic apparel, namely,… skirts, shorts, warm-up pants and sweatshirts, vests, t-shirts and collared knit shirts,… knit caps and visors, wind and water-resistant sports jackets”. Such athletic apparel includes apparel for use in riding and equestrian purposes. As such, the hats and coats could be identical clothing items. To the extent the clothing items are not identical, decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
The goods in U.S. Registration No. 4419013 include “LADIES' APPAREL, NAMELY, PANTS, SHIRTS, JACKETS, DRESSES, BLOUSES, COATS, FOOTWEAR, HEADWEAR AND ACCESSORIES, NAMELY, SCARVES, GLOVES AND BELTS”. The registration(s) does not contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii). Moreover, registrant’s apparel is not limited to any particular purpose and therefore includes apparel for riding and equestrian purposes.
Because applicant’s mark is nearly identical to the cited marks for identical and highly related goods, such that consumer confusion is likely as to the source of the goods, registration as to the goods in International Class 025 is refused.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
The filing dates of pending U.S. Application Serial Nos. 77853732, 77866087, 85337384 and 86013681 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirement(s) set forth below.
ENTITY CLARIFICATION
International Class 006
The identification of goods “Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores;” includes the heading of one or more international classes. The purpose of class headings is to indicate the subject matter and general scope of each international class of goods and/or services. See TMEP §1401.02(a). While such broad designations may be acceptable under the trademark laws and practice of other countries, the USPTO considers these headings too broad to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1297-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a).
An identification of goods and/or services in a U.S. application must be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d at 1298-99. Identifications may be amended 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. The scope of the identification for purposes of permissible amendments to class headings is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Therefore, applicant must amend the class heading(s) to identify goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
The following wording is acceptable: “horseshoe nails”
International Class 009
The identification of goods “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus;” includes the heading of one or more international classes. The purpose of class headings is to indicate the subject matter and general scope of each international class of goods and/or services. See TMEP §1401.02(a). While such broad designations may be acceptable under the trademark laws and practice of other countries, the USPTO considers these headings too broad to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1297-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a).
An identification of goods and/or services in a U.S. application must be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d at 1298-99. Identifications may be amended 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. The scope of the identification for purposes of permissible amendments to class headings is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Therefore, applicant must amend the class heading(s) to identify goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
The following wording is acceptable: “riding helmets; protective helmets; protective helmets for sports”
International Class 018
The identification of goods “Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery;” includes the heading of one or more international classes. The purpose of class headings is to indicate the subject matter and general scope of each international class of goods and/or services. See TMEP §1401.02(a). While such broad designations may be acceptable under the trademark laws and practice of other countries, the USPTO considers these headings too broad to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1297-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a).
An identification of goods and/or services in a U.S. application must be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d at 1298-99. Identifications may be amended 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. The scope of the identification for purposes of permissible amendments to class headings is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Therefore, applicant must amend the class heading(s) to identify goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
The following wording is acceptable: “crops for horse riding; saddle cloths for horses; halters for horses; leg bandages for horses; bits for horses; horseshoes; bridles for horses; plastic horseshoes; harnesses for horses; horse collars; knee-pads for horses; hoof protectors for horses; saddle covers for horses; blinders for horses; saddle straps; pommel; saddles for horses; horse blankets”
International Class 025
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). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods.
The following wording is acceptable: “riding hats, riding shoes, riding gloves, riding boots, riding coats, riding breeches”
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.
SUGGEST HIRING TRADEMARK COUNSEL
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
In addition, foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
The only attorneys who may practice before the 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 United States
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO
See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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 United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Ada P. Han/
U.S. Patent & Trademark Office
Trademark Attorney
Law Office 106
(571) 272-5873
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.