STRICT DEADLINE TO RESPOND TO THIS LETTER

INTERNATIONAL REGISTRATION NO. 1313055

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.uspto.gov/. 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 issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results

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). However, the applicant must address the following requirements.

Summary of Issues Applicant Must Address

Requirement for Disclaimer
Requirement for Additional Information
Requirement for Acceptable Identification of Goods

Disclaimer Required

The applicant has applied to register the mark Reporter techno-tailored in stylized form for:

Clothing; footwear; headgear; rainproof clothing; clothing of imitations of leather; leather clothing; clothing for gymnastics; sportswear; gowns; bathrobes; berets; underwear; teddies; stocking suspenders; footwear; stockings; breeches; albs; shirts; short-sleeve shirts; bodices; outerwear, footwear and headgear for babies and infants; hats; coats; hoods; belts; shoulder wraps; detachable collars; swimming costumes; masquerade costumes; neckties; bowties; pocket squares; sweat shirts; scarves; jackets; stuff jackets; skirts; aprons; gloves; knitwear (clothing); hosiery; sweaters; waistcoats; trousers; pelisses; shirt yokes; pyjamas; ponchos; sandals; saris; neck scarfs; shawls; topcoats; outerclothing; shirt fronts; boots; combinations; robes, in Class 25.

Applicant must disclaim the wording “TECHNO-TAILORED” because it merely describes a characteristic of applicant’s goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

The term “techno” is a commonly used prefix meaning “technology,” American Heritage® Dictionary of the English Language (5th ed. 2016), https://www.ahdictionary.com/word/search.html?q=techno, which is further defined as “a manner of accomplishing a task especially using technical processes, methods, or knowledge.” Merriam-Webster's Online Dictionary (11th ed. 2016), http://www.merriam-webster.com/dictionary/technology.

The term “tailored” when used for clothing, like the goods in the identification, is defined as “shaped in a way that matches the shape of the person’s body.” MacMillan Dictionary (2016), http://www.macmillandictionary.com/dictionary/american/tailored.

Thus, the composite term TECHNO-TAILORED merely describes the applicant’s goods as shaped in a way that matches the shape of the person’s body using technical processes, methods, or knowledge. The applicant’s website, printouts attached, describes such a process used by the applicant to produce dress shirts. Reporter Italy, How It Works, https://www.reporteritaly.com/how-it-works (viewed on Oct-12-2016, 10:35 EDT). This process consists of digitally measuring a person’s current clothing to produce additional clothing with a similar fit. Therefore, this process appears applicable to all of the applicant’s clothing items.

Material obtained from applicant’s website is acceptable as competent evidence. See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1898 (TTAB 2001); TBMP §1208.03; TMEP §710.01(b).

As a result, the mark wording is merely descriptive and must be disclaimed.

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

Applicant should submit a disclaimer in the following standardized format:

No claim is made to the exclusive right to use “TECHNO-TAILORED” apart from the mark as shown.

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.

Information Requirement

The applicant must provide the following information regarding the goods and wording appearing in the mark:

(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record.

If any of the above materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. In particular, the applicant should provide a copy of the patent referenced on the attached website printout. Conclusory statements will not satisfy this requirement; and

(2) Applicant must respond to the following questions:

(a) Is the term TECHNO-TAILORED in the mark a term of art in applicant’s industry? If so, what does this term mean?

(b) Will any of the applicant’s goods be tailored/fitted for particular customers? If so, which goods?

(c) Will the process described on the applicant’s website for producing customized dress shirts be applied to any of the other goods in the identification? If so, which goods?

(d) In addition to the process described on the applicant’s website, will technology be used in some manner to improve the construction/fit of the applicant’s goods over traditional tailoring techniques or as a replacement for such traditional techniques? If so, how?

See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).

Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.

Identification of Goods – As to Specified Goods

Applicant’s goods are identified as:

Clothing; footwear; headgear; rainproof clothing; clothing of imitations of leather; leather clothing; clothing for gymnastics; sportswear; gowns; bathrobes; berets; underwear; teddies; stocking suspenders; stockings; breeches; albs; shirts; short-sleeve shirts; bodices; outerwear, footwear and headgear for babies and infants; hats; coats; hoods; belts; shoulder wraps; detachable collars; swimming costumes; masquerade costumes; neckties; bowties; pocket squares; sweat shirts; scarves; jackets; stuff jackets; skirts; aprons; gloves; knitwear (clothing); hosiery; sweaters; waistcoats; trousers; pelisses; shirt yokes; pyjamas; ponchos; sandals; saris; neck scarfs; shawls; topcoats; outerclothing; shirt fronts; boots; combinations; robes, in Class 25.

This requirement is limited to the wording highlighted above in bold.

The word “clothing; rainproof clothing; clothing of imitations of leather; leather clothing; clothing for gymnastics; outerclothing” in the identification of goods in International Class 25 is indefinite and must be clarified because it does not specify the types of “clothing” with which the mark will be used. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Similarly, the specific types of “wear”, namely, “sportswear,” “outerwear for babies and infants,” and “knitwear,” are indefinite and must be clarified to specify the types of clothing with which the mark may be used.

Examples of acceptable identifications for clothing and wear in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after specific types of clothing and wear and then listing the specific types of clothing items.

Although most “wear” is indefinite, the term “rainwear” is definite; therefore, the applicant may specify that the “rainproof clothing,” is “rainwear,” if accurate.

The applicant may also delete the parenthetical “(clothing)” after “knitwear” because this wording does not affect the clarity of the identification. See TMEP §1402.12.

The word “headgear” used alone and in the context “headgear for babies and infants” in the identification of goods in International Class 25 is indefinite and must be clarified because it does not specify the types of headgear with which the mark will be used. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). The applicant may amend “headgear” to “headwear,” if accurate.

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18) and headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

Clothing, namely, _________ {specify goods, such as shirts, shorts, pants, coats, dresses, skirts, and socks}; footwear; headwear; rainproof clothing, namely, rainwear; clothing of imitations of leather, namely, _________ {specify goods, such as pants and skirts}; leather clothing, namely, ________{specify goods, such a pants and skirts}; clothing for gymnastics, namely, ___________ {specify goods, such as shirts, pants, and shoes}; sportswear, namely, ________ {specify goods, such as shirts, pants, and skirts}; gowns; bathrobes; berets; underwear; teddies; stocking suspenders; stockings; breeches; albs; shirts; short-sleeve shirts; bodices; outerwear for babies, namely, ________ {specify goods, such as coats and jackets}; footwear and headwear for babies and infants; hats; coats; hoods; belts; shoulder wraps; detachable collars; swimming costumes; masquerade costumes; neckties; bowties; pocket squares; sweat shirts; scarves; jackets; stuff jackets; skirts; aprons; gloves; knitwear, namely, _________ {specify goods, such as shirts, dresses, and sweaters}; hosiery; sweaters; waistcoats; trousers; pelisses; shirt yokes; pyjamas; ponchos; sandals; saris; neck scarfs; shawls; topcoats; outerclothing, namely, ________ {specify goods, such as coats and jackets}; shirt fronts; boots; combinations; robes, in Class 25.

See TMEP §1402.01.

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. See TMEP §1402.04.

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

Response Guidelines

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by 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.uspto.gov/trademarks/teas/correspondence.jsp.

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

For this application to proceed further, 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 specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 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(15), 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.

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.