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: 11/5/2015

 

 

INTERNATIONAL REGISTRATION NO. 1242987

 

The examining attorney acknowledges the response to the office action.  The color claim and mark description are acceptable.  These requirements are satisfied.  However, the description of goods requires further amendment.  The wording “POLAR FLEECE” in the identification of goods is unacceptable as it references a registered trademark.  See attached copy of U.S. Registration No(s). 1297628.  Additionally, other wording in the description requires amendment. 

Applicant is encouraged to telephone or email the examining attorney to satisfy the requirement below.

 

Identification of Goods  Classes 25, 28

Certain wording 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.  Suggestions are made in all caps below.  Deletions are stricken through.  Applicant may adopt the following identification, if accurate: 

 

Class 25

Clothing, namely, pants, trousers, WORKING OVERALLS, overalls, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, KNIT TOPS AND BOTTOMS, sweaters, cardigans, fleece and polar fleece tops and bottoms, jumpers, pullovers, twin sets, woven shirts; vests, training and track suits, BODY SUITS, shirts, sweat shirts, plush shirts, polo shirts, nightshirts, T-shirts, tank tops, cut and sew tops, dresses, skirts, trousers-skirts, gowns, bathrobes, nightdresses; footwear; headgear, namely, hats, caps, bandanas, basques, visors and head bands; casual wear, namely, pants, trousers, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, KNIT TOPS AND BOTTOMS, sweaters, cardigans, fleece and polar fleece tops and bottoms, jumpers, pullovers, twin sets, woven shirts; vests, training and track suits, BODY SUITS, shirts, sweat shirts, plush shirts, polo shirts, T-shirts, tank tops, cut and sew tops, dresses, skirts, trousers-skirts, gowns; weather-resistant outerclothing, namely, jackets, pants, coats, vests; clothing for gymnastics, namely, sport trousers, sport suits, sport jackets, sport shorts, sport shirts, sport shirts with short sleeves, sport singlets, sport vests, sport stockings; clothing for martial arts, namely, martial arts uniforms; clothing for skiing, namely, suits, jackets, trousers, pants, fleece TOPS; cyclists' clothing, namely, suits, jackets, shorts, pants, T-shirts, singlets, vests, stockings; clothing of leather, namely, leather shirts, leather trousers, leather pants, leather skirts, leather jackets, leather coats, leather vests; work wear, namely, working overalls; sports clothing, namely, technical apparel for the practice of sports, namely, shirts, team and competition jerseys and team and competition uniforms, polo shirts, tracksuits, warm-up suits; rain suits; articles of clothing for men, women and children, excluding underwear, namely, namely, pants, trousers, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, KNIT TOPS AND BOTTOMS, sweaters, cardigans, fleece and polar fleece tops and bottoms, jumpers, pullovers, twin sets, woven shirts; vests, training and track suits, BODY SUITS, shirts, sweat shirts, plush shirts, polo shirts, T-shirts, tank tops, cut and sew tops, dresses, skirts, trousers-skirts, gowns; ladies, men's and children's underwear; sports underwear; clothing of leather for motorcycle riders NAMELY, JACKETS, VESTS AND GLOVES; suits; bath robes; pants; jodhpurs; denim jeans; trousers; shorts; swimwear; bikinis; bonnets; beach wraps; vest tops; brassieres; underpants; nightgowns; pyjamas; jackets; 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; 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, ski gloves, bicycling gloves, snowboard gloves, riding gloves; driving gloves, motorcycle gloves; 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

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  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 an 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). 

 

If applicant does not respond to this Office action within the six-month period for response, the wording for which suggestions in all caps above are made will be deleted from the description.  Additionally, the wording “fleece and polar” will be deleted.  The application will then proceed with the remaining goods in class 25 and classes 3, 9, 14, 16, 18 and 28.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.

 

 

 

 

 

 

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/5/2015 FOR U.S. APPLICATION SERIAL NO. 79163521

 

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 11/5/2015 (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.