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. 79163521
MARK: SUPERGA
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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: Superga Trademark S.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1242987
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.
No Conflicting Marks
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES that applicant must address:
Color Claim and Mark Description
The colors white and blue are claimed as a feature of the mark
The mark consists of the wording SUPERGA in uppercase letters in white color, surrounded by a white rectangular shape with rounded corners. The wording and design are contained on a blue rectangular shape.
Identification of Goods
Class 3
The wording “skin care preparations and treatments” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “Non-medicated skin care preparations” is in Class 3, but “Medicated skin care preparations” are in Class 5. See suggested amended wording below.
The wording “perfumed tissues” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “Perfumed tissues for cosmetic use, pre-moistened” is in Class 3, but “Perfumed paper tissues for cosmetic use” are in Class 16. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
Class 9
The wording “goggles” in 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. For example, “Diving goggles” are in Class 9, but “Therapeutic eye hydration goggles for the treatment of dry eyes” are in Class 10. See suggested amended wording below.
The wording “helmets” in the identification of goods for Class 9 is indefinite and must be clarified. See TMEP §1402.01. Applicant must further specify the purpose or intended use of the helmets. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold):
Class 14
The wording “horological articles” in the identification of goods for Class 14 is indefinite and must be clarified. See TMEP §1402.01. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
Class 16
The wording “educational supplies” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “School writing books” are in Class 16, but “Children's educational software” is in Class 9 and “Educational card games” are in Class 28. See suggested amended wording below.
The wording “writing, drawing and painting articles and equipment” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “School writing books” are in Class 16, but “Electronic writing tablets” are in Class 9 and “Spray guns for painting” are in Class 7. See suggested amended wording below.
The wording “drawing cases” and “cases for […] and for drawing” is indefinite and must be clarified. See TMEP §1402.01. Applicant must further specify the purpose or intended use of the cases. See suggested amended wording below.
The wording “printed publications” in the identification of goods is indefinite and must be clarified to indicate the nature of the publications (e.g. books, newspapers) and the featured subject matter. See suggested amended wording below.
The wording “books,” “periodicals,” “handbooks manuals,” “magazines,” “catalogs” and “leaflets” in the identification of goods is indefinite and must be clarified to indicate the featured subject matter or field of use. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
· Class 16: Paper; cardboard; stationery and educational supplies, namely, {specify supplies appropriate for Class 16, e.g. notebooks, highlighter pens, non-electric chart-pointers, etc…}; writing, drawing and painting articles and
equipment, namely, {specify supplies appropriate for Class 16, e.g. paint brushes, paint trays, writing implements, drawing pads, drawing rulers,
etc…}; watercolour pencils; drawing cases for holding pens, pencils and stationery; pens; markers; permanent markers; highlighters; pencils; color
pencils; cases for pens, pencils and for drawing; wax crayons; pastel crayons; compasses for drawing; chalks for drawing; paintbrushes; drawing rulers; drawing
instruments; folders for papers; rubber erasers; writing slates; paper cutters; pencil sharpeners; writing or drawing books; display binders; diaries; desk diaries; block notepads; notepads;
sketchbooks; notebooks; printed publications, namely, {identify the type of publication using its common commercial name e.g. journals} in the field of {indicate specific field of
use}; calendars; photographs; drawings and graphic reproductions; books in the field of {indicate subject matter}; periodicals in the field of {indicate
subject matter}; handbooks manuals and manuals in the field of {specify area of use, e.g., instructional math}; magazines in the
field of {specify subject matter}; newspapers; catalogues in the field of {indicate specific field of use}; leaflets about {indicate subject matter}; adhesives for
stationery or household purposes, in particular, adhesive tapes for stationery or household purposes, adhesives for household purposes, glues for office use
Class 18
The wording “vanity cases, not fitted” is indefinite and must be clarified. See TMEP §1402.01. Applicant must indicate that the cases are sold empty, in order to avoid classification issues. See suggested amended wording below.
The wording “bags,” “baggage” and “bags for campers” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “Book bags” are in Class 18, but “Bags adapted for laptops” is in Class 9, “Laundry bags” are in Class 22 and “Bowling bags” are in Class 28. See suggested amended wording below.
The wording “garment carriers” must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. For example, “Garment bags for travel” are in Class 18, but “Cloth bags for laundry” are in Class 22. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
Class 25
The wording “Clothing” and “articles of clothing for men, women and children (excluding underwear)” in the identification of goods is indefinite and must be clarified because it does not specify the types of clothing for which the mark is used. See TMEP §§1402.01, 1402.03. Applicant must amend the identification by inserting the word “namely,” after clothing” and indicating the specific types of clothing items (e.g., shirts, pants, coats, dresses). See TMEP §§1402.01, 1402.03(a). 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. See suggested amended wording below.
The wording “headgear” in 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. For example, “Hats” are in Class 25, but “Textile headgear specially adapted for use with medical ventilator mask interfaces” are in Class 10. See suggested amended wording below.
The wording “casual wear; weather-resistant outerclothing; clothing for gymnastics; clothing for martial arts; clothing for skiing; cyclists' clothing; clothing of leather; work wear; sports clothing” 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 clothing items. 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. See suggested amended wording below.
The wording “sports gloves” in 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. For example, “ski gloves” are in Class 25, but “boxing gloves” are in Class 28. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
· Class 25: Clothing, namely, {list specific types of clothing
items appropriate for Class 25, e.g. pants, skirts, t-shirts, sweatshirts, etc…}; footwear; headgear, namely, {specify types of headwear appropriate for
Class 25, e.g., hats, caps}; casual wear, namely, {specify types of casual wear appropriate for Class 25}; weather-resistant outerclothing, namely, {specify
types of outerclothing appropriate for Class 25}; clothing for gymnastics, namely, {specify types of clothing for gymnastics appropriate for Class 25}; clothing for martial
arts, namely, {specify types of clothing for martial arts appropriate for Class 25}; clothing for skiing, namely, {specify types of clothing for skiing
appropriate for Class 25}; cyclists' clothing, namely, {specify types of cyclists' clothing appropriate for Class 25}; clothing of leather, namely, {specify
types of leather clothing appropriate for Class 25}; work wear, namely, {specify types of work wear appropriate for Class 25}; sports clothing, namely,
{specify types of sports clothing appropriate for Class 25}; rain suits; articles of clothing for men, women and children (excluding underwear), excluding underwear,
namely, {list specific types of clothing items appropriate for Class 25, e.g. pants, skirts, t-shirts, sweatshirts, etc…}; ladies, men's and children's underwear; sports
underwear; clothing of leather for motorcycle riders; suits; bath robes; pants; jodhpurs; denim jeans; trousers; shorts; swimwear; bikinis; bonnets; beach wraps; vest tops; brassieres; underpants;
nightgowns; pyjamas; jackets clothing; wind resistant jackets; blousons; coats; gilets; skirts; polo shirts; T-shirts; jumpers; sweaters; shirts; tank tops; waist belts;
dresses; socks; sports socks; ties; pocket squares dress handkerchiefs (pocket squares); sweat shirts; dressing gowns; pullovers; cardigans; scarves; shawls; head scarves;
neckbands and headbands; balaclavas; ear muffs; jumper suits; gym suits; running suits; snow suits; sweat suits; warm-up suits; boiler suits; topcoats; gloves; mittens; sports gloves, namely, {specify types of sports gloves appropriate for Class 25, e.g., driving gloves, ski gloves, etc…}; sports jerseys; soccer jerseys; footwear; boots; work shoes; walking shoes;
beach shoes; sports footwear; infants' footwear; ski boots; leggings; flip-flops; slippers; sandals; soccer shoes; rain boots and shoes; canvas shoes; rubber boots and shoes; booties; mountaineering
boots; boots for motorcycling; wooden shoes
Class 28
The wording “gymnastic articles not included in other classes” 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. See suggested amended wording below.
The wording “sports training apparatus” in 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. For example, “Sports training apparatus, namely, ball return machines” are in Class 28, but “Sports training eyeglasses” are in Class 9. See suggested amended wording below.
The wording “protective padding for playing sports; protective padding for sports” and “gloves made specifically for use in playing sports” is indefinite and must be clarified. See TMEP §1402.01. Applicant must indicate the specific sports for which the padding and gloves are used. See suggested amended wording below.
The wording “bags adapted for sporting articles” and “cases adapted for sporting articles” in 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. For example, “Bags specially adapted for sports equipment” are in Class 28, but “Bags for sports” are in Class 18. See suggested amended wording below.
The wording “skates” is indefinite and must be clarified. See TMEP §1402.01. Applicant must indicate the specific kinds of skates. See suggested amended wording below.
Applicant may adopt the following suggested amendments, if accurate (changes in bold; deletions crossed-out):
· Class 28: Gymnastic articles not included in other classes, namely, {list articles appropriate for Class 28, e.g. parallel bars, vaulting horses, appliances for gynastics, etc…}; gymnastic and sports training
apparatus; sports training apparatus, namely, {list training apparatus appropriate for Class 28, e.g. golf practice platforms, pitching machines, etc…}; protective padding for
playing sports {indicate specific sports}; protective padding for sports {indicate specific sports};
gloves made specifically for use in playing sports {indicate specific sports}; sports balls; inflatable balls for sports; bags adapted for sporting
articles equipment; cases adapted for sporting articles equipment; bags specially adapted for carrying
sports equipment and sports balls; bats as sporting articles sporting articles; discuses for sports; skates,
namely, {list skates appropriate for Class 28, e.g. roller skates, ice skates, etc…}; bats for games; skis; snowboards
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 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.
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 §§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.
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.
/Daniel F. Capshaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@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.