UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 2/27/2019

 

INTERNATIONAL REGISTRATION NO. 1408689

 

ISSUES APPLICANT MUST ADDRESS:  On February 22, 2019, the trademark examining attorney and Christian Morgan discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

IDENTIFICATION OF GOODS

 

The wording brooches, instructional and teaching material, advertising publications, shopping bags bath sheets, face towels, hand towels and men’s athletic supports” in the identification of goods is indefinite and must be clarified because the goods implicate goods in more than one international class and are therefore indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods and/or services in the identified international class(es).  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii).  Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class(es) 14 is indefinite and does not appear to describe any goods and/or services in that class(es):  “watches incorporating a telecommunication function.”  See TMEP §1904.02(c)(iii). 

 

Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any amendment to the identification must identify goods and/or services in International Class(es) 14 and be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii).  The scope of the identification for purposes of permissible amendments is limited by the international class(es) assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c). 

 

Alternatively, applicant may delete this unacceptable wording from the identification.  See TMEP §1904.02(c)(iii)-(iv).  However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted.  See TMEP §1402.07(e).

 

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration.  TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii).  However, filing such a request with the International Bureau is not considered a formal response to this Office action.  See TMEP §1904.02(c)(iv), (e)(iii).  Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii).  The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances.  See TMEP §§716.02(g), 1904.02(c)(iii)-(iv). 

 

Applicant may substitute the following wording, if accurate:

 

“Class 3: Bleaching preparations, laundry detergent, and fabric softeners for laundry use; cleaning preparations; non-medicated soaps, cosmetics, hair lotions; adhesives for cosmetic purposes; massage oils; cosmetic preparations for skin care; non-medicated skin balms; skin care cosmetics for use during exercise; non-medicated skin care preparations; astringents for cosmetic purposes; non-medicated preparations for the bath and shower; shower gel; bath gels and bubble bath; scented body lotions, creams and butters; scented moisturising skin cream; skin, face, hand moisturisers; body lotions, creams and butters; moisturising creams; body oil; skin cleansing lotions; non-medicated lip balm, eye balms; cosmetic masks; face, body, skin cleansers; skin toners; exfoliators being exfoliant creams; hair care products, namely, hair shampoo, hair conditioners, hair mousse, hair moulding creams, hair gel and hair spray; dry shampoos; shoe polish; personal deodorant; antiperspirants; non-medicated toiletry preparations; washing preparations; petroleum jelly for cosmetic purposes; pre-impregnated wipes and towels with cleansing chemicals and compounds for hygienic purposes; shoe wax; but none of the aforesaid goods relating to cycling

 

Class 9: Clocks being time recording devices; time clocks being time recording devices; electronic downloadable publications in the nature of ebooks and magazines in the fields of fitness, sports, games, health and well-being; downloadable mobile application software for use in retail shopping for goods in the fields of fitness, sports, games, health and well-being; downloadable mobile application software for tracking health, well-being, sports and fitness; smart glasses; smart earbuds; time measuring instruments being chronographs for use as specialized time recording apparatuses; sunglasses; spectacles; eyewear; spectacle cases, protective helmets; ski helmets; snowboard helmets; safety clothing for protection against accident or injury, namely, safety vests and armbands; smart watches; calculator watches being a smart watch; smart jewellery comprised of a central processing unit and computer peripherals in a piece of jewellery; mobile phone cases; mobile phone holders; headphones; smartwatches that communicate data to smartphones; wristwatches being smartwatches with GPS apparatus; structural and replacement parts and fittings all for the aforesaid goods; but none of the aforesaid goods relating to cycling

 

Class 10: Massage apparatus; bandages for support purposes; body fat monitors; compression garments; compression bandages; foam massage rollers; heart rate monitors; structural and replacement parts and fittings all for the aforesaid goods; but none of the aforesaid goods relating to cycling

 

Class 14: Jewellery; horological and chronometric instruments; electronic watches; mechanical watches; watches incorporating a memory function; watches incorporating a telecommunication function; presentation boxes for watches; rings; bracelets; necklaces; earrings; jewelry brooches; clocks; alarm clocks; key-rings; structural and replacement parts and fittings all for the aforesaid goods; but none of the aforesaid goods relating to cycling

 

Class 16: Printed instructional and teaching material being magazines and books in the field of health, wellness, exercise, fitness, sports training, work-out tracking, nutrition and lifestyle; advent calendars; books in the field of health and fitness; advertising publications being printed books and magazines in the field of health and fitness; event programmes in the field of health and fitness; but none of the aforesaid goods relating to cycling

 

Class 18: All-purpose carrying bags; wallets; belt bags and hip bags; canvas carry-all bags; barrel bags; duffel bags; shoulder bags; sling bags; toiletry bags sold empty; tote bags; backpacks; wash bags sold empty for carrying toiletries; shoppers being textile shopping bags; holdalls; rucksacks; athletic bags; beach bags; but none of the aforesaid goods relating to cycling

 

Class 24: Bath sheets being towels of textile; towels of textile; face towels of textiles; hand towels of textile; but none of the aforesaid goods relating to cycling

 

Class 25: Clothing, namely, headbands, hoods, jackets, jerseys, leggings, pullovers, shirts, short-sleeve shirts, socks, sweaters, t-shirts, tights, trousers, waistcoats, jumpsuits, pants, shorts, joggers, tanktops, sleeveless t-shirts, sweatshirts, ski pants, tights, mesh shirts, long-sleeve shirts, and vests; underpants; underwear; footwear; headwear, namely, caps; money belts; wristbands as clothing; outerwear, namely, gloves and scarfs; football clothing and uniforms, namely, jerseys, t-shirts, shorts, socks; base layer being clothing; sports kits being uniforms, namely, clothing being uniforms for football, basketball, golf, running, gymnastics and exercise in general; clothing for dance, namely, dance costumes; articles of golf clothing, namely shorts, shirts, and trousers; swimming costumes; swimsuits; bathing trunks; moisture-wicking sports pants; moisture-wicking sports shirts; moisture-wicking sports bras; coordinates, namely, two-piece clothing outfits consisting of tops and bottoms; but none of the aforesaid goods relating to cycling

 

Class 28: Gymnastic and sporting articles for athletic use, namely, gymnastic apparatus, elbow guards, knee guards, shin guards, and men's athletic supporters supports; bags adapted for use with sporting equipment; balls for games; balls for sports; bar-bells; discuses for sports; exercise balls; face masks for sports, namely, catchers' masks, goalie masks; fitness apparatus, namely, weights; flippers for swimming; gloves for games, namely, soccer goalkeepers' gloves, baseball gloves, football gloves; hoops for exercise, namely, basketball hoops and hoops for rhythmic sportive gymnastics; trampolines; football body protectors; structural and replacement parts and fittings all for the aforesaid goods; but none of the aforesaid goods relating to cycling

 

Class 35: On-line administration and supervision of a discount, special offer and gift voucher schemes; advertising, marketing and promotional services; dissemination of advertising and promotional materials; on-line advertising on a computer network; retail and online retail store services connected with the sale of bleaching preparations, laundry detergent, and fabric softeners for laundry use, cleaning preparations, non-medicated soaps, cosmetics, hair lotions, adhesives for cosmetic purposes, massage oils, cosmetic preparations for skin care, non-medicated skin balms, skin care cosmetics for use during exercise, non-medicated skin care preparations, astringents for cosmetic purposes, non-medicated preparations for the bath and shower, shower gel, bath gels and bubble bath, scented body lotions, creams and butters, scented moisturising skin cream, skin, face, hand moisturisers, body lotions, creams and butters, moisturising creams, body oil, skin cleansing lotions, non-medicated lip balm, eye balms, cosmetic masks, face, body, skin cleansers, skin toners, exfoliators being exfoliant creams, hair care products, namely, hair shampoo, hair conditioners, hair mousse, hair moulding creams, hair gel and hair spray, dry shampoos, shoe polish, personal deodorant, antiperspirants, non-medicated toiletry preparations, washing preparations, petroleum jelly for cosmetic purposes, pre-impregnated wipes and towels with cleansing chemicals and compounds for hygienic purposes, shoe wax, Clocks being time recording devices, time clocks being time recording devices, electronic downloadable publications in the nature of ebooks and magazines in the fields of fitness, sports, games, health and well-being, downloadable mobile application software for use in retail shopping for goods in the fields of fitness, sports, games, health and well-being, downloadable mobile application software for tracking health, well-being, sports and fitness, smart glasses, smart earbuds, time measuring instruments being chronographs for use as specialized time recording apparatuses, sunglasses, spectacles, eyewear, spectacle cases, protective helmets, ski helmets, snowboard helmets, safety clothing for protection against accident or injury, namely safety vests and armbands, smart watches, calculator watches being a smart watch, smart jewellery comprised of a central processing unit and computer peripherals in a piece of jewellery, mobile phone cases, mobile phone holders, headphones, smartwatches that communicate data to smartphones, wristwatches being smartwatches with GPS apparatus, Massage apparatus, bandages for support purposes, body fat monitors, compression garments, compression bandages, foam massage rollers, heart rate monitors, Jewellery, horological and chronometric instruments, electronic watches, mechanical watches, watches incorporating a memory function, watches incorporating a telecommunication function, presentation boxes for watches, rings, bracelets, necklaces, earrings, brooches, clocks, alarm clocks, key-rings, Instructional and teaching material being magazines and books in the field of health, wellness, exercise, fitness, sports training, work-out tracking, nutrition and lifestyle, advent calendars, books in the field of health and fitness, advertising publications being books and magazines in the field of health and fitness, event programmes in the field of health and fitness, All-purpose carrying bags, wallets, belt bags and hip bags, canvas carry-all bags, barrel bags, duffel bags, shoulder bags, sling bags, toiletry bags sold empty, tote bags, backpacks, wash bags sold empty for carrying toiletries, shoppers being shopping bags, holdalls, rucksacks, athletic bags, beach bags, Bath sheets being towels, towels of textile, face towels, hand towels, Clothing, namely, headbands, hoods, jackets, jerseys, leggings, pullovers, shirts, short-sleeve shirts, socks, sweaters, t-shirts, tights, trousers, waistcoats, jumpsuits, pants, shorts, joggers, tanktops, sleeveless t-shirts, sweatshirts, ski pants, tights, mesh shirts, long-sleeve shirts, and vests, underpants, underwear, footwear, headwear, namely, caps, money belts, wristbands as clothing, outerwear, namely, gloves and scarfs, football clothing and uniforms, namely, jerseys, t-shirts, shorts, socks, base layer being clothing, sports kits being uniforms, namely, clothing being uniforms for football, basketball, golf, running, gymnastics and exercise in general, clothing for dance, namely, dance costumes, articles of golf clothing, namely shorts, shirts, and trousers, swimming costumes, swimsuits, bathing trunks, moisture-wicking sports pants, moisture-wicking sports shirts, moisture-wicking sports bras, coordinates, namely, two-piece clothing outfits consisting of tops and bottoms, Gymnastic mats, gymnasium exercise mats, floor mats in the nature of non-slip pads for use under apparatus to prevent slippage, non-slip showers mats, yoga mats, Gymnastic and sporting articles for athletic use, namely, gymnastic apparatus, elbow guards, knee guards, shin guards, and men's athletic supports, bags adapted for use with sporting equipment, balls for games, balls for sports, bar-bells, discuses for sports, exercise balls, face masks for sports, namely, catchers' masks, goalie masks, fitness apparatus, namely, weights, flippers for swimming, gloves for games, namely, soccer goalkeepers' gloves, baseball gloves, football gloves, hoops for exercise, namely, basketball hoops and hoops for rhythmic sportive gymnastics, trampolines, football body protectors, and structural and replacement parts and fittings all for the aforesaid goods, but none of the aforesaid goods relating to cycling; advertising and marketing services provided via social media; information, advisory and consultancy services relating to the aforesaid services; but none of the aforesaid services relating to cycling

 

Class 41: Instruction comprising guidance, ideas, tips and insights connected to style, fashion, cosmetics, health, wellness, exercise, fitness, sports training, work-out tracking, nutrition and lifestyle; provision of non-downloadable online electronic publications in the nature of ebooks and magazines in the field of style, fashion, cosmetics, health, wellness, exercise, fitness, sports training, work-out tracking, nutrition and lifestyle; information, advisory and consultancy services relating to the aforesaid services; but none of the aforesaid services relating to cycling”

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  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.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class(es) 14, 16, 18, 24 28 will be deleted from the application: men’s athletic supports, face towels, hand towels, bath sheets being towels, shoppers being shopping bags, advertising publications being books and magazines in the field of health and fitness, instructional and teaching material being magazines and books in the field of health, wellness, exercise, fitness, sports training, work-out tracking, nutrition and lifestyle, brooches, watches incorporating a telecommunication function.  The application will then proceed with all of the remaining good in all of the remaining classes of goods and services not listed above.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

/Charles H Hiser IV/

Examining Attorney

Law Office 112

(571) 272-7526

charles.hiser@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.