Offc Action Outgoing

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.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES that applicant must address:

Identifications of goods
Identifications of services
Significance

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).

IDENTIFICATIONS OF GOODS:

The identification of goods for International Classes 14 and 27 are acceptable and remain unchanged.

The identifications of goods are not acceptable because wording is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the industry or field in which the goods are used or intended to be used.

In addition, there were several listings of orthopedic soles in International Class 10. The repetitive wording was deleted. Stationery was listed twice in International Class 16. The duplicative wording was deleted. Inner soles were listed several times in International Class 25. The repetitive wording was deleted.

Applicant may adopt the following identifications, if accurate:

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood, namely, ______ (the applicant must specify the items, for instance, coatings and rust protecting paints); colorants; mordants, namely, _______ (the applicant must specify the items, for instance, mordant dyes); raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; printing compositions ink; food colorants; colorants for beverages; shoe dyes; mordant dyes for leather; ink for leather; protective preparations for metals, namely, ______ (the applicant must specify the items, for instance, anti-tarnishing preparations for coating metals); thinners for lacquers and paints; undercoating for vehicle chassis; silvering powders for painters, decorators, printers and artists, gildings, namely, ______ (the applicant must specify the items, for instance, precious metals in foil or powder form for painters, decorators, printers and artists); distempers, in International Class 2.

Bleaching preparations and other substances for laundry use, namely, _____ (the applicant must specify the items, for instance, fabric softeners, laundry detergent); cleaning, polishing, scouring and abrasive preparations; soaps, perfumeries, essential oils, cosmetics, hair lotions, dentifrices; air fragrancing preparations; breath freshening sprays; sachets for perfuming linen; tissues impregnated with cosmetic lotions; cloths impregnated with a detergent for cleaning; perfumed tissues, namely, tissues impregnated with perfumed extracts; leather and shoe cleaning and polishing preparations; creams for leather, leather preservatives, leather polishes, detergent compositions for cleaning shoes, shoe cream, shoe polish, shoe sprays, shoe wax, in International Class 3.

Pharmaceutical and veterinary preparations for ______ (the applicant must specify the condition being treated, for instance, the treatment of immune system related diseases and disorders) ; sanitary preparations for medical purposes; dietetic food and substances, namely, ______ (the applicant must specify the items, for instance, pasta, crackers, nutritional meal replacement bars ) adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; medical plasters, materials for dressings, namely, ______ (the applicant must specify the items, for instance, bandages, gauze); material for stopping teeth, dental wax; disinfectants for ______ (the applicant must specify the use, sanitary purposes); preparations for destroying vermin; fungicides, herbicides; dietetic preparations adapted for medical use, namely, ______ (the applicant must specify the items, for instance, dietary supplements); tissues impregnated with pharmaceutical skin lotions; air deodorizing preparations; first-aid boxes, namely, first aid kits, and first-aid cushions, filled, namely, first aid kits; first-aid boxes sold filled, namely, first aid kits; foot impression materials for medical purposes and foot impression foams for medical purposes, in International Class 5.

Hand tools and hand-operated implements, namely, ______ (the applicant must specify the items, for instance, planes, saws) ; cutlery, namely, _______ (the applicant must specify the items, for instance, forks, spoons knives); side arms, namely, _______ (the applicant must specify the items, for instance, hunting knives); razors; hair clippers and nail clippers; file tools, namely, _______ (the applicant must specify the items, for instance, emery files); electric or non-electric fingernail buffers; manicure and pedicure sets; shaving cases; non-electric hand implements for hair curling namely, _______ (the applicant must specify the items, for instance, curling irons); electric and non-electric depilatory appliances; cuticle tweezers; nippers; razor blades, in International Class 8.

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, supervision, lifesaving and teaching apparatus and instruments, namely, _______ (the applicant must specify the items, for instance, cameras, conductivity meters, computers, electric sensors, optical signaling cables, life vests); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, _____ (the applicant must specify the items, for instance, electric conductors, electric transformers, electrical switches, and voltage regulators); apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, namely, ______ (the applicant must specify the items, for instance, blank magnetic data carriers), recording discs, namely, ______ (the applicant must specify the items, for instance, blank recordable optical discs); compact discs, DVDs and other digital recording media, namely, ______ (the applicant must specify the items and the subject matter, for instance, high definition digital discs featuring music); mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software for _____ (the applicant must specify the subject matter, for instance, 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; electric light regulators, namely, dimmers; downloadable electronic publications, namely, ______ (the applicant must specify the publication and the subject matter, for instance, e-zines in the field of sports); electronic diaries; ergometers not for medical purposes; automatic time switches; computer carrying cases; bags for tablet computers and mobile phones; parts and accessories for all the aforesaid goods, in International Class 9.

Surgical, medical, dental and veterinary apparatus and instruments, namely, artificial limbs, eyes and teeth; orthopedic articles, namely, _______ (the applicant must specify the items, for instance, supports); suture materials; massage apparatus; arterial blood pressure measuring apparatus; electric foot warmers for medical use; heating blankets and heating cushions for medical purposes; insoles for corrective treatment of conditions of the feet; orthopedic soles and orthopaedic inner soles incorporating arch supports; orthopaedic foot and shoe supports; supportive foot bandages; orthopaedic foot cushions; orthopaedic arch cushions; supports for flat feet; elasticated supports for the ankle; orthopaedic soles, orthotic inserts for footwear; orthopaedic footwear and the like for rehabilitation, foot gymnastics and therapy for medical purposes; parts and accessories 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, all for medical purposes; elastic stockings for medical purposes; parts and fittings for all the aforesaid goods, in International Class 10.

Apparatus for the exchange of substances and heat for use in the production of steam for use in lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; water filters; electric air deodorising apparatus; humidifiers; electric blankets and heating cushions not for medical purposes; massage bath installations, namely, whirlpool baths; barbecues; tanning apparatus, namely, tanning beds; ornamental fountains; fireplaces; whirlpools; sauna bath installations; parts and accessories for all the aforesaid goods, in International Class 11.

Paper and cardboard; printed matter, namely, ______ (the applicant must specify the items, for instance, greeting cards, calendars); bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, _____ (the applicant must specify the items, for instance, easels, pencils, canvas panels); paint brushes; typewriters and office requisites except furniture, namely, _____ (the applicant must specify the items, for instance, correction fluid for type, staplers) ; printed instructional and teaching material in the field of _____ (the applicant must specify the subject matter, for instance, computers); plastic materials for packaging namely, _____ (the applicant must specify the items, for instance, plastic bubble packs for wrapping or packaging); printers' type; printing blocks; tissues of paper for removing make-up; disposable paper products, namely, _____ (the applicant must specify the items, for instance, disposable napkins, paper towels); filter paper; wrapping materials made of paper, namely, _____ (the applicant must specify the items, for instance, gift wrapping paper); 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, _____ (the applicant must specify the items, for instance plastic bags, boxes of cardboard or paper, plastic bubble packs for wrapping 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, key bags, briefcases, rucksacks, business card holders, namely, ______ (the applicant must specify the items, for instance, wallets), travel garment covers, namely, ______ (the applicant must specify the items, for instance, garment bags for travel), toiletry bags sold empty, toiletry kits, namely, ______ (the applicant must specify the items, for instance, 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, in International Class 18.

Non-metallic building materials, namely, _____ (the applicant must specify the items, for instance, soffits, fascia); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; clay, namely, _____ (the applicant must specify the items, for instance, 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, _____ (the applicant must specify the items, for instance, fabric and sheeting for landscaping); granite; compressed cork, namely, _____ (the applicant must specify the items, for instance, flooring underlayment made of cork); marble; mosaics for building, namely, _____ (the applicant must specify the items, for instance, glass mosaics for use in building construction); schists, namely, _____ (the applicant must specify the items, for instance, rocks used as building material); bird baths structures not of metal; wall and ceiling panels of wood, plastic and foam; covering, namely, _____ (the applicant must specify the items, for instance, 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 panelling 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, 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, _____ (the applicant must specify the items, for instance, tables, chairs, dressers) ; display boards; bamboo curtains; statues, figures, works of art, ornaments and decorations all made of ______ (the applicant must specify the material, for instance, plaster, plastic, wood); containers not of metal, non-metal closures and holders therefor; non-metal cotter pins, pegs not of metal; non-electric fans for personal use; hooks not of metal for clothes rails; non-metal house numbers; fixed towel dispensers, not of metal; baskets for domestic use, not of metal; fitted fabric furniture covers; storage, namely, _____ (the applicant must specify the items, for instance, 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; roller blinds of textile or of plastic, in International Class 20.

Household or kitchen utensils and containers, namely, _____ (the applicant must specify the items, for instance, pouring and straining spouts, containers for household or kitchen use); combs and sponges, namely, _____ (the applicant must specify the items, for instance, bath sponges); brushes, except paintbrushes, namely, _____ (the applicant must specify the items, for instance, hair brushes); brush-making materials; articles for cleaning purposes namely, _____ (the applicant must specify the items, for instance, cleaning cloths, cleaning brushes); steelwool; unworked or semi-worked glass, except glass used in building; beverage glassware, porcelain mugs and earthenware mugs; cosmetic utensils, namely, _____ (the applicant must specify the items, for instance, cosmetic brushes); picnic baskets sold empty; comb cases; stands for shaving brushes; perfume burners; shoe horns, shoe polishers, non-electric; shoe tree stretchers, boot tree stretchers; toilet cases, namely, _____ (the applicant must specify the items, for instance, toilet brush holders); portable coolers; toothbrushes; parts and accessories for all the aforesaid goods, in International Class 21.

Textiles and textile goods, namely, _____ (the applicant must specify the items, for instance, table cloth, towels); bed covers; table covers, namely _____ (the applicant must specify the items, for instance, table linen, table pads); household textiles, namely, _____ (the applicant must specify the items, for instance, curtains of textile); shower curtains of textile; sanitary flannel; wall hangings of textile, in International Class 24.

Clothing, namely, _____ (the applicant must specify the items, for instance, shirts, pants, dresses, jackets), footwear, headgear, namely, _____ (the applicant must specify the items, for instance, hats, caps); parts and fittings for footwear, namely, shoe uppers, heels, outsoles, inner soles, insoles, shoes featuring shoe bottoms, namely, shoe soles, and foot supports, shoe featuring arch supports and shoe inserts, in International Class 25.

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, sewing pins and needles; artificial flowers, fruits and plants; ornamental novelty badges for wear not of precious metal; buttons, namely, ornaments novelty badges; cloth patches for clothing; brooches for clothing; haberdashery, except thread, namely, appliques; hair ornaments; hair curlers other than hand implements; wigs; shoe ornaments not of precious metal; letters and numerals for marking linen, in International Class 26.

Games and playthings, namely, ______ (the applicant must specify the items, for instance, toy vehicles, dolls, doll houses); gymnastic and sporting articles, namely, ______ (the applicant must specify the items, for instance, gymnastic apparatus, athletic wrist and joint supports); decorations for Christmas trees; mobiles; video game apparatus, namely, ______ (the applicant must specify the items, for instance, video game consoles); console gaming devices for playing computer games; game controllers for game consoles; parts and fittings for gymnastic and sporting articles, in International Class 28.

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products, namely, ______ (the applicant must specify the items, for instance, cheese, milk powder, milk ferments for culinary purposes, milk shakes); edible oils and fats; milk beverages, namely, _____ (the applicant must specify the items, for instance, milk beverages containing fruits), milk predominating, namely, _____ (the applicant must specify the items, for instance, milk-based beverages with chocolate, milk-based beverages containing coffee); prepared meals consisting predominantly of meat, fish, poultry, game, vegetables, eggs, milk or milk products in the nature of cheese, in International Class 29.

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from bread, pastry, cereals and confectionery in the nature of _____ (the applicant must specify the items, for instance, bread pudding, cereal bars, chocolate, frozen confections); edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces, condiments, namely, ______ (the applicant must specify the items, for instance, pepper sauce, ketchup); spices; ice; prepared meals consisting principally of pasta or rice; pizza, in International Class 30.

Grains and agricultural, horticultural and forestry products, namely, ______ (the applicant must specify the items, for instance, unprocessed barley, oats, rice, rye and wheat, and live trees); live animals; fresh fruits and vegetables; seeds for planting, natural plants and flowers; foodstuffs for animals, malt for brewing and distilling, in International Class 31.

Beers; mineral and aerated waters and other non-alcoholic beverages, namely, ______ (the applicant must specify the items, for instance, orange juice, mango juice); fruit beverages and fruit juices; syrups and other preparations, namely, ______ (the applicant must specify the items, for instance, syrup substitutes) for making beverages, in International Class 32.

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

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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.

IDENTIFICATIONS OF SERVICES:

The identifications of services are not acceptable because wording is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the field of use in which the services are offered.

In addition, travel arrangement was listed twice in International Class 39. The duplicate wording was deleted. Also, political lobbying is indefinite and is not a class 45 service. Please amend political lobbying to a definite class 45 service or please delete political lobbying.

Applicant may adopt the following identifications, if accurate:

Advertising; 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, hair clippers for personal use, 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, 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 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 regulators, 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, parts and fittings for all the aforesaid goods, in particular fitting components, wedges, pads, insoles, foam padding, foam pads and moulded 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, massage bath installations, barbecues, tanning apparatus 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, jewelry, precious stones, horological and chronometric instruments, watch cases and jewelry cases, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paintbrushes, typewriters and office requisites, instructional and teaching materials, 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 goods, 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, included in this class, containers and closures and holders therefor, dowels, not of metal, non-electric fans for personal use, coat hooks, not of metal, non-luminous house numbers, not of metal, fixed towel dispensers, not of metal, baskets, not of metal, garment storage covers, mattresses, massage tables, sleeping bags for camping, slatted bed frames, inflatable publicity objects, air mattresses, air cushions, 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, 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, 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 not included in other classes, 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.

Transport, namely, _____ (the applicant must specify the services, for instance, the transport and delivery of goods); packaging and storage of goods, namely, _____ (the applicant must specify the services, for instance, transport, delivery, packaging and storage of goods, namely, packages and other freight for others); travel arrangement, namely, _____ (the applicant must specify the services, for instance, arranging travel tours); consultancy and information relating to all of the aforesaid services, in International Class 39.

Educational services, namely, ______ (the applicant must specify the mode of instruction and the field, for instance, conducting seminars and workshops in the field of business); providing of training in the field of ______ (the applicant must specify the field, for instance, computers) ; entertainment in the nature of ______ (the applicant must specify the field, for instance, organization of exhibitions for musical entertainment); organizing community sporting and cultural activities; services of a publishing house, excluded printing services, namely, ______ (the applicant must specify the services, for instance, publishing of electronic publications); arranging and conducting of conferences, congresses, meetings, seminars and workshops in the field of ______ (the applicant must specify the field, for instance, business) ; publication of printed matter and electronic form, except for advertising purposes, namely, _____ (the applicant must specify the services, for instance, publishing of books, e-books); providing on-line electronic publications, not downloadable, namely, _____ (the applicant must specify the services, for instance, providing online publications in the nature of e-books in the field of sports); educational and entertainment services, namely, organization of sports competitions; consultancy and information in relation to the aforesaid services; rental of costumes, in International Class 41.

Services for providing of food and drink, providing temporary accommodation; room reservation services, namely, _____ (the applicant must specify the services, for instance, reservation of hotel rooms for travelers); consultancy and information in relation to the aforesaid services, in International Class 43.

Medical services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services, namely, ________ (the applicant must specify the items, for instance, afforestation services, namely, converting land to forest by planting trees or their seeds); podiatry services, namely, providing foot care and foot treatment services; advisory, consultancy and information services in relation to the aforesaid services, in International Class 44.

Legal services; security services, namely, providing protection of property and individuals; personal and social services, namely, genealogical research, dog walking services, astrological and spiritual services, babysitting, escorting in society, namely, chaperoning, personal image consultancy, personal image consultancy in relation to personal color analysis, detective agencies, services in relation to church weddings, namely, wedding chapel services, nanny services, house sitting, pet sitting, casting of horoscopes, conducting of personal correspondence for others, namely, conducting personal background investigations, online social networking services, namely, services for linking social contacts, matchmaking, personal shopping services, planning and arranging of wedding ceremonies, lost property return, dealing with authorities for others, namely, ________ (the applicant must specify the items, for instance, representation of clients in tax matters before tax authorities), rental of clothing, rental of jewelry, dating services; licensing of intellectual property rights and copyright; issuing licenses for franchising concepts,, namely, _____ (the applicant must specify the services, for instance, licensing of advertising slogans and cartoon characters), in International Class 45.

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

SIGNIFICANCE:

Applicant must explain whether “BIRKENSTOCK” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.

Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following question:

What does the term BIRKENSTOCK mean or signify?

Does the term BIRKENSTOCK have any meaning in a foreign language?

Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

RESPONSE:

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.

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.

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

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.

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

(571) 272-9291

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

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.