Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 1/12/2016

INTERNATIONAL REGISTRATION NO. 1244734

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Julia Sutherland on January 12, 2016, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not 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.

 

The amended identifications for International Classes 2, 3, 10, 11, 24, 25, 26, 28, 29, 30, 31, 32, 39, 43, 44 and 45 are acceptable and the requirements are satisfied.

 

AMENDMENT OF IDENTIFICATION OF GOODS FOR INTERNATIONAL CLASSES 5, 8, 9, 16, 18, 19, 20, 21 AND 27:

 

The identification of goods for International Classes 5, 8, 9, 16, 18, 19, 20, 21 and 27 are amended to read as follows:

 

Pharmaceutical and veterinary preparations for treatment of immune system related diseases and disorders, for treating and preventing tendon and muscle injuries and disorders, sports related injuries, and for knee cartilage regeneration, pharmaceutical preparations for wounds, dermatological pharmaceutical products, balms for pharmaceutical purposes, sunburn preparations for pharmaceutical purposes; Sanitary preparations for medical purposes; Dietetic food and substances, namely, pasta, crackers, nutritional meal replacement bars, diabetic bread, medicated candy, fibre, bread-spreads, marmalade, cereal, oil, soymilk, soymilk yoghurt, soymilk drinks, margarine, cookies, cakes, chocolate, water, teas, fruit and vegetable-juices, cheese, soups, adapted for medical use, food for babies; Dietary supplements for humans and animals; medical plasters, materials for dressings, namely, gauze and bandages; Material for stopping teeth, dental wax; Disinfectants for sanitary purposes, disinfectants for hygiene purposes, all-purpose disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Dietetic preparations adapted for medical use, namely, dietary supplements, vitamins, royal jelly; Tissues impregnated with pharmaceutical skin lotions; Air deodorizing preparations; First-aid boxes and first-aid cushions, filled; First-aid boxes filled; Foot impression materials for medical purposes and foot impression foams for medical purposes, in International class 5.

 

Hand tools and hand-operated implements, namely, planes, saws, lasts shoemakers' hand tools, pincers, clamps; cutlery, namely, knives, spoons, forks; Side arms, namely, hunting knives; Razors; Hair clippers and nail clippers; file tools, namely, emery files; electric or non-electric fingernail buffers; manicure and pedicure sets; Shaving cases; Non-electric hand implements for hair curling, namely, curling irons; Depilatory appliances, electric and non-electric; Cuticle tweezers; nippers; razor blades, in International Class 8.

 

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, supervision, life saving and teaching apparatus and instruments, namely, cameras, conductivity meters, computers, electric sensors, optical signaling cables, life vests, batteries; lenses for photographic apparatus; photographic flash units for cameras; photographic projectors; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric conductors, electric transformers, electrical switches and voltage regulators; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, namely, blank magnetic data carriers, recording discs, namely, blank recordable optic discs; Compact discs, DVDs and other digital recording media, namely, high definition digital discs featuring music, magnetic tapes for tape recorders, cassettes, CD's, vinyl records, DAT tapes, video tapes, floppy discs, CD-Roms and DVDs all blank; magnetic tapes for tape recorders, cassettes, CD's, vinyl records, DAT tapes, video tapes, floppy discs, CD-Roms and DVD all prerecorded featuring music, motion pictures, movies and films in the fields of children's entertainment, cartoons, drama, action, comedy, family, westerns, science fiction, fantasy, horror, thriller, serials, news, documentary and other subjects of interest or entertainment to the public; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software for database management; Fire-extinguishing apparatus; Eyeglasses; Sunglasses; Frames for glasses; Spectacle cases; Contact lenses; Containers for contact lenses; Headphones; Personal weighing scales; fat measuring scales; Digital photo frames; electrical light regulators, namely, dimmers; downloadable electronic publications, namely, e-zines in the field of sports, books, magazines, newspapers, photographs, printed periodicals, newsletters, and brochures in the field of footwear, medicine, cartoons, drama, action, comedy, family, westerns, science fiction, fantasy, horror, thriller, serials, news, documentary and/or other subjects of interest or entertainment to the public; electronic diaries; ergometers, not for medical purposes; time switches, automatic; computer carrying cases; bags for tablet computers and mobile phones; parts and accessories for all the aforesaid goods, included in this class, in International Class 9.

 

Paper and cardboard; Printed matter, namely, greeting cards, calendars; printed matter, namely, books, magazines, product guides, survey answer sheets, newspapers, photographs, printed periodicals, newsletters, and brochures in the field of footwear, medicine, cartoons, drama, action, comedy, family, westerns, science fiction, fantasy, horror, thriller, serials, news, documentary and/or other subjects of interest or entertainment to the public; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials, namely, easels, pencils, canvas panels; Paint brushes; Typewriters and office requisites, except furniture, namely, correction fluid for type, staplers; printed instructional and teaching materials in the field of computers; Plastic materials for packaging, namely, plastic bubble packs for wrapping or packaging, plastic bags for packing; Printers' type; Printing blocks; Tissues of paper for removing make-up; Disposable paper products, namely, disposable napkins, paper towels; filter paper; Wrapping materials made of paper, namely, gift wrapping paper, paper for wrapping and packaging; Works of art and figurines of paper and cardboard, and architects' models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics, namely, plastic bags, boxes of cardboard or paper, plastic bubble packs for storage or packaging; Posters, in International Class 16.

 

Leather and imitation leather goods made thereof, namely, bags, hand bags, gym bags, purse, coin purses, key bags, briefcases, rucksacks, business card holders, namely, wallets, card cases, travel garment covers, namely, garment bags for travel, toiletry bags, sold empty, toiletry kits, namely, toiletry case sold empty; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Parts and accessories for all the aforesaid goods, included in this class, in International Class 18.

 

Non-metallic building materials, namely, soffits, fascia; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; clay, namely, non-metal slabs of clay; rock crystal; letter boxes of masonry; building glass; safety glass for building purposes; paint spraying booths, not of metal; insect screens, not of metal; geotextiles, namely, fabric and sheeting for landscaping; granite; compressed cork, namely, flooring underlayment made of cork; marble; mosaics for building, namely, glass mosaics for use in building construction; schists, namely, rocks used as building material; bird baths structures not of metal; wall and ceiling panels of wood, plastic and foam; covering, namely, non-metal vent cover for HVAC ducts and cladding panels, not of metal, for construction and building; non-metal rumble strips; wall and façade plasters; flooring of wood or stone; non-metal windows and doors; wall and ceiling paneling of wood; parquet flooring; laminate flooring, not of metal; tile floorings, not of metal; mine timber; porches, not of metal, for building; jalousies, not of metal; non-metallic transportable buildings in the form of summerhouses and gazebos, garden pavilions, greenhouses, conservatories; transportable tool sheds, not of metal; building materials of wood, plastic, clay or glass for use in horticulture and landscaping; works of art and figurines and statuettes of stone, concrete or marble; swimming pools, prefabricated, not of metal, in International Class 19.

 

Furniture, mirrors, picture frames; items of furniture, namely, tables, chairs, dressers; display boards; bamboo curtains; statues, figures, works of art, and ornaments and decorations, all made of plaster, plastic, wood; containers not of metal, non-metal closures and holders therefor, included in this class; non-metal cotter pins; non-electric fans for personal use; hooks, not of metal, for clothes rails; non-metal house numbers; towel dispensers, not of metal, fixed; baskets for domestic use, not of metal; fitted fabric furniture covers; storage namely, plastic storage drums; mattresses; massage tables; sleeping bags for camping; bed bases; inflatable publicity objects; air mattresses, not for medical purposes, for use when camping; air cushions, not for medical purposes; tent pegs, not of metal; parts and accessories for all the aforesaid goods, included in this class; roller blinds of textile or of plastic, in International Class 20.

 

Household or kitchen utensils and containers, namely, pouring and straining sprouts, containers for household or kitchen use, food graters, sieves, basting spoons, vegetable serving spoons, skimmers, spatulas, whisks; Combs and sponges, namely, bath sponges, scrubbing and cleaning sponges; Brushes, except paintbrushes, namely, hairbrushes, dishwashing brushes; Brush-making materials; Articles for cleaning purposes, namely, cleaning cloths, cleaning brushes, mops, dustpans, brooms; Steelwool; Unworked or semi-worked glass, except glass used in building; beverage glassware, porcelain mugs and earthenware mugs, storage jars, preserving jars made of glassware, porcelain and earthenware; Cosmetic utensils, not included in other classes, namely, cosmetic brushes; Picnic baskets sold empty; Comb cases; Stands for shaving brushes; Perfume burners; Shoe horns, Shoe polishers, non-electric; Shoe trees stretchers, boot trees stretchers; Toilet cases, namely, toilet brush holders; Portable coolers; Toothbrushes; Parts and accessories for all the aforesaid goods, included in this class, in International Class 21.

 

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; non-textile wall hangings, in International Class 27.

 

See TMEP §§1402.01, 1402.01(e).

 

AMENDMENT OF IDENTIFICATION OF SERVICES FOR INTERNATIONAL CLASSES 35 AND 41:

 

The identification of services for International Classes 35 and 41 are amended to read as follows:

 

Advertising services; Business management; Business administration; providing office functions; wholesale and retail store services featuring paints, varnishes, lacquers, preservatives against rusts and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists, printing ink, food dyes, colorants for beverages, shoe dyes, mordants for leather, ink for leather, protective preparations for metals, thinners for paints and lacquers, undercoating for vehicle chassis, silvering powders, gildings, distempers, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, air fragrancing preparations, breath freshening sprays, sachets for perfuming linen, tissues impregnated with cosmetic lotions, tissues impregnated with cleaning preparations, perfumed tissues, preparations for cleaning and polishing leather and shoes, creams for leather, preservatives for leather, leather polish, cleaning preparations for shoes, shoe cream, shoe polish, shoe spray, shoe wax, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, dietetic substances adapted for medical use, tissues impregnated with pharmaceutical lotions, air deodorizing preparations, first-aid boxes and first-aid cushions, filled, first-aid kits, filled, foot impression materials and foot impression foams, hand tools and hand operated implements in the nature of cutlery, side arms, razors, hand operated hair clippers for personal use and nail clippers, files, electric or non-electric fingernail polishers, manicure sets and pedicure sets, shaving cases, non-electric hand implements for hair curling, electric and non-electric depilation appliances, cuticle nippers, pincers, razor blades, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, 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 data carriers, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, spectacles, sunglasses, spectacle frames, spectacle cases, contact lenses, containers for contact lenses, headphones, bathroom scales, fat measuring scales, digital photo frames, light regulator, namely, dimmers, downloadable electronic publications, electronic agendas, ergometers, time switches, laptop bags, bags for tablet computers and for mobile telephones, parts and fittings for all the aforesaid goods, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, massage apparatus, pulse meters, electric footwarmers for medical purposes, electric blankets and heating cushions for medical purposes, inner soles for corrective treatment for foot conditions, orthopaedic shoe inserts and inserts for orthopaedic footwear, including orthopaedic inner soles incorporating arch supports, orthopaedic supports for feet and shoes, supportive foot bandages, orthopaedic foot pads, orthopaedic arch cushions, supports for flat feet, elasticized supports for the ankle, foot supports, orthopaedic soles for shoes, orthotic inserts for footwear, orthopaedic footwear and the like for rehabilitation, foot gymnastics and therapy, and for other medical purposes, parts and fittings for all the aforesaid goods, in particular fitting components, wedges, pads, insoles, foam padding, foam pads and molded shoe soles, including in the form of orthopaedic fully plastic inserts, elastic stockings for medical purposes, parts and fittings for all of the aforesaid goods, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, water filters, air deodorizing apparatus, air humidifiers, electric blankets and heating cushions, other than for medical purposes, massage bath installations, barbecues, tanning apparatus, namely, sun beds in the nature of tanning beds, ornamental fountains, domestic fireplaces, whirlpools, sauna bath installations, parts and fittings for all the aforesaid goods, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, watch cases and jewellery cases, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paintbrushes, typewriters and office requisites, except furniture, instructional and teaching material, plastic materials for packaging, printers' type, printing blocks, stationery, tissues of paper for removing make-up, disposable articles of paper, filtering materials of paper, paper materials for packaging, works of art and figurines of paper or cardboard and architectural models, bags, pouches and goods for packaging, wrapping and storage purposes of paper, cardboard or plastic, posters, leather and imitations of leather, and goods made of these materials, namely, bags, handbags, sports bags, purses, wallets, key cases, key holders, attaché cases, backpacks, business card holders, garment bags, toiletry bags, toiletry cases, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, parts and fittings for all the aforesaid goods, non-metallic building materials, non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal, clay, rock crystal, letter boxes of masonry, building glass, safety glass, paint spraying booths, not of metal, insect screens, not of metal, geotextiles, granite, compressed cork, marble, mosaics for building, schists, bird baths not of metal, wall and ceiling panels of wood, plastic and foamed material, covering and cladding panels, not of metal, strips, not of metal, wall and facade plasters, floor coverings of wood or stone, windows and doors, wall and ceiling panelling of wood, parquet, laminate, tiles, not of metal, wood, porches, not of metal, for building, jalousies, not of metal, non-metallic transportable buildings in the form of summerhouses and gazebos, garden pavilions, greenhouses, conservatories, transportable tool sheds, not of metal, building materials of wood, plastic, clay or glass for use in gardening and landscaping, works of art and figurines, statuettes of stone, concrete, marble, swimming pools structures, not of metal, furniture, mirrors, picture frames, furnishings, display boards, bamboo curtains, statues, figurines, works of art and ornaments and decorations, containers and closures and holders therefor, dowels, not of metal, non-electric fans for personal use, coathooks, not of metal, non-luminous house numbers, not of metal, fixed towel dispensers, not of metal, baskets, not of metal, storage garment covers, mattresses, massage tables, sleeping bags for camping, slatted bed frames, inflatable publicity objects, air mattresses, not for medical purposes, air cushions, not for medical purposes, tent pegs, not of metal, parts and fittings for all the aforesaid goods, roller blinds of textile or of plastic, household or kitchen utensils and containers, combs and sponges, brushes, except paint brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, except glass used in building, glassware, porcelain and earthenware, cosmetic utensils, fitted picnic baskets, comb cases, shaving brush stands, perfume burners, shoe horns, non-electric wax-polishing appliances for shoes, shoe trees, boot trees, fitted vanity cases, non-electric portable coldboxes, toothbrushes, parts and fittings for the aforesaid goods, textiles and textile goods, not included in other classes, bed covers, table covers, household textiles, shower curtains of textile, sanitary flannel, wall hangings of textile, clothing, footwear, headgear, parts and fittings for footwear, namely, shoe uppers, heels, outsoles, inner soles, insoles, parts for shoe bottoms, foot supports, arch supports and shoe inserts, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, fruits and plants, badges for wear, not of precious metal, ornamental novelty badges and buttons, sew-on badges, brooches, haberdashery, except thread, hair ornaments, hair curlers, other than hand implements, false hair, shoe ornaments, not of precious metal, numerals or letters for marking linen, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, non-textile wall hangings, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, mobiles, video game machines, game consoles, controllers for game consoles, parts and fittings for gymnastic and sporting articles, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, milk beverages, milk predominating, prepared meals, consisting predominantly of meat, fish, poultry, game, vegetables, eggs, milk or milk products, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, condiments, spices, ice, prepared meals, consisting predominantly of pasta, rice, pizza, grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages; Business consulting services; Business consultancy services relating to marketing, in International Class 35.

 

Educational services, namely, conducting seminars and workshops in the field of business, computer education training, providing classes and instruction in the field of dance, providing online cognitive assessments and training programs that help identify cognitive strengths and weaknesses of an individual; providing of training in the field of computers, personal fitness training services and consultancy, arranging professional workshop and training courses; entertainment in the nature of organization of exhibitions for musical entertainments, conducting contests, comedy shows, wine tastings, providing online computer games; organizing community sporting and cultural activities; services of a publishing house, excluded printing services, namely, publishing electronic publications, books, magazines, e-books, audio books, music and illustrations, multimedia publishing of books, magazines, journals, software, games and music; arranging and conducting of conferences, congresses, meetings, seminars and workshops in the field of business, science, literature, in the field of fitness, exercise, boxing, kick boxing and mixed martial arts; publication of printed matter also in electronic form, except for advertising purposes, namely, publishing of books, e-books; providing on-line non-downloadable electronic publications, namely, providing online publications in the nature of e-books in the fields of sports; educational and entertainment services, namely, organization of sports competitions; consultancy and information in relation to the aforesaid services, included in this class; rental of costumes, in International Class 41.

 

See TMEP §§1402.01, 1402.01(e).

 

SIGNIFICANCE:

 

The following statements are added to the record:

 

The wording “BIRKENSTOCK” has no meaning other than trademark and service mark significance.

 

The wording “BIRKENSTOCK” does not have any meaning in a foreign language.

 

See 37 C.F.R. §2.61(b); TMEP §808.01(a).

 

 

 

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

(571) 272-9291

marlene.bell@uspto.gov (for informal inquiries)

 

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 Trademark Electronic Application System (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 1/12/2016 FOR U.S. APPLICATION SERIAL NO.79164245

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.