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.

SEARCH OF OFFICE’S DATABASE OF 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:

INQUIRY REGARDING MEANING / SIGNIFICANCE OF MARK
MARK DESCRIPTION REQUIREMENT
IDENTIFICATION OF GOODS REQUIREMENT

INQUIRY REGARDING MEANING / SIGNIFICANCE OF MARK

Applicant must explain whether “F2” 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 or has any meaning in a foreign language. See 37 C.F.R. §§2.32(a)(9), (a)(10), 2.61(b); TMEP §§809, 814. An applicant must submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling, in Latin characters, of terms in the mark in non-Latin characters) of all non-Latin characters in a mark. 37 C.F.R. §2.32(a)(9), (a)(10); TMEP §809. If the wording does not have meaning in a foreign language, applicant should so specify. See 37 C.F.R. §2.61(b); TMEP §809.03.

Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must state whether “F2” is an acronym or abbreviation.

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.

MARK DESCRIPTION REQUIREMENT

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).

Therefore, applicant must provide a description of the applied-for mark. The following is suggested:

The mark consists of the letter “F” and the number “2” arranged so that the lower horizontal portion of the “F” and the top of the “2” are next to each other, with a thin outline around both the letter and number.

IDENTIFICATION OF GOODS REQUIREMENT

Particular wording in the identification of goods is indefinite, as discussed below in bold, and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). 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); see TMEP §§1402.07(a), 1904.02(c).

Therefore, any modification to this wording must identify goods and/or services in International Classes 012, 018, 025, 028, 035, 037 and/or 039, the classification specified in the application for these goods and/or services.

The following substitute wording is suggested, if accurate:

International Class 012:

Vehicles for locomotion by land, air, water or rail{specify common commercial name of the type of vehicles; for example, if accurate, may amend to “Vehicles for locomotion by land, air, water or rail, namely, land vehicles, airplanes, boats and light rail vehicles”}; bicycles, electric cycles {further specify nature of the goods; for example, if accurate, may amend to “electric bicycles”}, electric vehicles {further specify nature of the goods; for example, if accurate, may amend to "self-propelled electric vehicles"}, motors for motorcycles, rims for wheels of bicycles, motorcycles, bicycle forks, chains for bicycles, bells for bicycles, chimes for bicycles, baskets adapted for bicycles, handle bars for bicycles, cycle hubs {further specify type hubs; for example, if accurate, may amend to "wheel hubs for cycles”}, dress guards for bicycles, pedals for bicycles, pumps for bicycles, frames for bicycles, wheels for bicycles, tyres for bicycles, bicycle seats, inner tubes for bicycles, spokes for bicycles, bags for bicycles{further specify type of bags; for example, if accurate, may amend to "pannier bags for bicycles"}, front attachments for bicycles; direction indicators, handbrake levers, gear shifters for bicycles {clarify grammatical structure for clarity; may amend to “direction indicators, handbrake levers, and gear shifters for bicycles”}, brakes for bicycles, repair outfits for inner tubes{further specify nature of the goods and indicate that these are inner tubes for tires; for example, if accurate, may amend to "repair patches for inner tube of tires"}, panniers adapted for cycles, tricycles, two-wheeler stands, saddlebags adapted for bicycles

International Class 018:

Bags, namely, rucksacks, shoulder bags, beach bags, briefcases, tote bags; goods of leather and imitations of leather, namely, leather containers {specify use of leather containers, e.g., leather containers for carrying beverages}, leather etuis{specify use of leather etuis, e.g., leather etuis for holding ______}, leather pouches, leather lines {specify use of leather lines, e.g., leather lines for ________}, leather straps, leather bags, leather laces, ~~in particular purses,~~ pocket wallets, key wallets, brief cases, wrappers for documents {specify nature, type, composition of “wrappers”}, travelling bags, travelling ~~necessaries~~ {necessaries is indefinite, identify the particular items by their common commercial names}, leather shopping bags, leather card cases, key cases, saddlebags, leather shoulder belts

International Class 025:

Sportswear, namely, sports jackets, sports trousers, sports overalls, jumpers, t-shirts, sports underwear, bathing trunks, swimsuits, bikinis, neoprene suits for surfing, cycling wear {specify “cycling wear”, may replace with cycling shoes, cycling shorts}, leisurewear {specify leisurewear, may replace with leisure shoes, leisure suits}, jeans, snowboarding clothing {specify snowboarding clothing, may replace with Snowboard boots, Snowboard jackets, Snowboard pants}, snowboarding gloves, snowboarding bonnets and caps, headscarves, caps, shoes, sports shoes, sports boots, neoprene footlets, snowboarding boots, hard boots {specify use of “hard boots”}, soft boots{specify use of “soft boots”}, belts, leather belts included in this class

International Class 028:

Gymnastic and sporting articles {specify goods, e.g., Gymnastic and sporting articles, namely, horizontal bars, parallel bars, footballs, basketballs}; windsurfing boards; sail masts, mast feet, booms, fins and trapezes as accessories for windsurfing boards; surfboards; leeboards; transport bags especially designed for windsurfing boards; snowboards, bindings for snowboards, kiteboards, bindings for kiteboards, plate bindings for ______, skis, ski bindings, ski poles, included in this class

International Class 035:

Retail services via the internet in the field of vehicles and vehicle accessories, articles of clothing, lighting, toys, sporting goods {specify type of retail services, e.g., retail store services, and field of goods featured; for example, may amend to “On-line retail store services in the field of vehicles and vehicle accessories, articles of clothing, lighting, toys, and sporting goods”}

International Class 037:

Installation, care, purification, maintenance and repair of land vehicles, cycles and electric bicycles, {the terms “care” and “purification” are indefinite and must be clarified or deleted; if accurate, may amend to “Installation, maintenance and repair of land vehicles, cycles and electric bicycles”}; vehicle maintenance, varnishing, vehicle polishing, vehicle maintenance and repair, restoration of bicycles, rustproofing, anti-rust treatment for vehicles

International Class 039:

Rental of cycles {specify cycles, e.g., bicycles, motorcycles}

RESPONSE TO OFFICE ACTION

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 U.S. commonwealths or U.S. territories. 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

/Justin Severson/

Examining Attorney

Law Office 111

571-272-6893

justin.severson@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.