UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

INTERNATIONAL REGISTRATION NO. 1419397

 

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 USPTO Records

 

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:

 

• Description of the Mark
• Identification of the Goods

 

Identification of the Goods and/or Services

 

Some of the wording in the identification of goods in International Classes 014, 018, and 025 is indefinite and/or too broad.  This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  For example, “key fobs” could indicate “decorative key fobs” in Class 014 or “electronic key fobs being remote control apparatus” in Class 009; “headgear” indicates both “headwear” in Class 025 and “safety headgear” in Class 009.  Applicant must therefore amend the wording to more clearly indicate the nature of the goods where indicated in the suggested bold wording below.

 

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 of the World Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Classes 014, 018, and 025 only, the classes specified in the application for these goods and/or services.  See TMEP §1904.02(c), (c)(ii).

 

Applicant may adopt the following wording, if accurate: 

 

“Precious metals and their alloys; jewellery; precious stones; watches and clocks; watch straps; Presentation boxes for watches watch boxes; costume jewellery; imitation jewellery; semi-precious stones; rings; ear rings; bracelets; brooches; necklaces; key rings and key chains and charms therefor; decorative key fobs; key holders of precious metals (trinkets or fobs); jewelry pins and pendants; jewellery charms; lapel pins; tie pins; tie clips; cuff links; jewellery cases; badges, key rings and key chains, cases, boxes, works of art, busts, statues and trophies, all being made wholly or principally of precious metal and their alloys or coated therewith; collectible and commemorative coins; copper tokens being commemorative and collectible coins; silver collectible ornaments; commemorative medals and medallions; parts and fittings for all of the aforesaid goods,” in International Class 014.

 

“Leather and imitations of leather; trunks and travelling bags; umbrellas; parasols; articles of luggage; cases; suitcases; garment bags for travel; bags; school bags and satchels; back packs; rucksacks; beach bags; sports bags; athletic bags; gym bags; boot bags for travel; duffel bags; holdalls; reusable shopping bags; toiletry bags sold empty; wash bags for carrying toiletries sold empty; valises; attaché cases; brief cases; wallets; purses; key cases; pouches for {specify use, e.g., for merchandise packing}; credit card cases and holders; umbrella covers; bands and straps of leather; leather shoe and boot linings; collars and covers for animals; clothing for animals; leather trimmings for furniture; laces, leads and leashes of leather or imitation leather; parts and fittings for all of the aforesaid goods,” in International Class 018.

 

“Clothing, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; footwear, headwear gear; articles of outer clothing namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; articles of sports clothing namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; leisurewear, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; replica football kits comprising {specify primary components of kits featuring goods primarily in Class 025, e.g., jerseys, socks, uniforms, and also including a helmet and football}; football shirts; football shorts; football socks; tracksuits; training clothing, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; training pants; sweatshirts; sweatpants; jackets; coats; parkas; fleeces; shirts; t-shirts; vests; singlets; blouses; knitwear; jerseys; jumpers; sweaters; cardigans; hooded tops; shawls; waistcoats; suits; trousers; jeans; pants; dungarees; shorts; leggings; skirts; ties; articles of underclothing, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; underwear; boxer shorts; nightwear; pyjamas; night shirts; dressing gowns; bathrobes; beach clothes, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; swimwear; swim suits; bathing trunks; bathing caps; hosiery; socks; gloves; mittens; scarves; ear muffs; wristbands; headbands; belts; braces; aprons; collars; collar protector strips and pads for application to clothing collars; articles of clothing, footwear and headwear gear for babies and children namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants}; bodysuits; romper suits; baby pants; sleep suits; bibs; baby boots; footwear being articles of clothing; boots; shoes; sandals; slippers; galoshes; sports shoes; training shoes; football boots and shoes; studs for football boots and shoes; fittings of metal for boots and shoes; hats; caps being headwear; berets; visors being headwear; ready-made clothes linings; uniforms; waterproof clothing, namely, {specify articles of clothing by common commercial name., e.g., tops, bottoms, shirts, pants},” in International Class 025.

 

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.

 

Description of the Mark

 

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 letters “MUFC” configured into the design of a soccer player kicking a ball.

 

Response

 

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. 

 

 

 

 

/David A. Hoffman/

Examining Attorney

USPTO Law Office 107

(Ph) 571-272-8805

(Fx) 571-273-8805

Email:  david.hoffman@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.