United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79262779
Mark: SPD
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Correspondence Address: |
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Applicant: Shimano Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1476646
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods in the application:
International Class 12:
parts, fittings and accessories of bicycles, namely, hubs, internal gear hubs, axles of hubs, hub quick release levers, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys, chains, chain deflectors, shift cables, cranks, crank sets, chain wheels, pedals, toe clips, brake levers, brakes, brake cables, brake shoes, brake rotors, brake pads, rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release levers, head parts for frame-fork assembly, frames, suspensions, handlebars, handlebar stems, grips for handlebars, saddles, mudguards, kick stands, carriers, bells, horns, rearview mirrors, derailleurs controlled by computer; bicycle pedal cleats and their parts and accessories.
International Class 25:
clothing for sports, namely, cyclists' clothing, cyclists' jerseys; clothing for gymnastics; outerclothing.
See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
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).
IDENTIFICATION OF GOODS
For the reasons set forth below, the identification of goods needs clarification because it is, in part, indefinite. TMEP §1402.01. The portion of the identification that is unacceptable is in bold below with the explanation and/or suggestion in brackets. The remainder of the identification is acceptable.
International Class 12:
Bicycles; parts, fittings and accessories of bicycles, namely, hubs, internal gear hubs, axles of hubs, hub quick release levers, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys, chains, chain deflectors, shift cables, cranks, crank sets, chain wheels, pedals, toe clips, brake levers, brakes, brake cables, brake shoes, brake rotors, brake pads, rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release levers, head parts for frame-fork assembly, frames, suspensions, handlebars, handlebar stems, grips for handlebars, saddles, mudguards, kick stands, carriers, bells, horns, rearview mirrors, derailleurs controlled by computer [the specific types of these goods must be listed, the following is suggested: parts, fittings and accessories of bicycles, namely, wheel hubs, internal gear hubs, axles of wheel hubs, hub quick release levers, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, belt pulleys, chains, chain deflectors, shift cables, cranks, crank sets, chain wheels, pedals, toe clips, brake levers, brakes, brake cables, brake shoes, brake rotors, brake pads, rims for bicycle wheels, wheels, bicycle wheel spokes, spoke clips for wheels, bottom mud guard brackets being structural components, seat pillars, seat pillar quick release levers, head parts for frame-fork assembly, frames, suspension systems, handlebars, handlebar stems, grips for handlebars, saddles, mudguards, kick stands, cargo carriers, bells, horns, rearview mirrors, derailleurs controlled by computer]; bicycle pedal cleats and their parts and accessories [the specific types of these goods must be listed, the following is suggested: bicycle pedal cleats and their structural parts and accessories, namely, {indicate type of accessory}]; bicycle saddle bags; luggage carriers for bicycles; anti-theft alarms for bicycles; direction indicators for bicycles.
International Class 25:
Footwear, other than special footwear for sports; fishing shoes; fishing waders; toe caps for waterproofing for shoes and boots, other than special footwear for sports; toe caps for cold weather for shoes and boots, other than special footwear for sports; covers for waterproofing for shoes and boots, other than special footwear for sports; covers for cold weather for shoes and boots, other than special footwear for sports; special footwear for sports, other than horse-riding boots and windsurfing shoes, namely, golf shoes, cycling shoes; toe caps for waterproofing for cycling shoes; toe caps for cold weather for cycling shoes; covers for waterproofing for cycling shoes; covers for cold weather for cycling shoes; clothing for sports, namely, cyclists' clothing, cyclists' jerseys [the specific types of these goods must be listed, the following is suggested: clothing for sports, namely, cyclists' clothing, namely, jerseys {list any other types of clothing, e.g., shorts}]; shirts; pants; tights; clothing for gymnastics [the specific types of these goods must be listed, the following is suggested: clothing for gymnastics, namely, {indicate type, e.g., shoes, pants, etc.}]; jerseys as clothing; outerclothing [the specific types of these goods must be listed, the following is suggested: outerclothing, namely, {indicate specific types, e.g., coats, hats, gloves, etc.}]; rain wear; raincoats; rain suits; jackets; fishing vests; underwear; gloves as clothing; cycling gloves; socks; caps being headwear; cleats for attachment to cycling shoes; cleats for attachment to sports shoes.
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
Response guidelines. For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following goods will be deleted from the application:
International Class 12:
parts, fittings and accessories of bicycles, namely, hubs, internal gear hubs, axles of hubs, hub quick release levers, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys, chains, chain deflectors, shift cables, cranks, crank sets, chain wheels, pedals, toe clips, brake levers, brakes, brake cables, brake shoes, brake rotors, brake pads, rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release levers, head parts for frame-fork assembly, frames, suspensions, handlebars, handlebar stems, grips for handlebars, saddles, mudguards, kick stands, carriers, bells, horns, rearview mirrors, derailleurs controlled by computer; bicycle pedal cleats and their parts and accessories.
International Class 25:
clothing for sports, namely, cyclists' clothing, cyclists' jerseys; clothing for gymnastics; outerclothing.
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following goods only:
International Class 12:
Bicycles; bicycle saddle bags; luggage carriers for bicycles; anti-theft alarms for bicycles; direction indicators for bicycles.
International Class 25:
Footwear, other than special footwear for sports; fishing shoes; fishing waders; toe caps for waterproofing for shoes and boots, other than special footwear for sports; toe caps for cold weather for shoes and boots, other than special footwear for sports; covers for waterproofing for shoes and boots, other than special footwear for sports; covers for cold weather for shoes and boots, other than special footwear for sports; special footwear for sports, other than horse-riding boots and windsurfing shoes, namely, golf shoes, cycling shoes; toe caps for waterproofing for cycling shoes; toe caps for cold weather for cycling shoes; covers for waterproofing for cycling shoes; covers for cold weather for cycling shoes; shirts; pants; tights; jerseys as clothing; rain wear; raincoats; rain suits; jackets; fishing vests; underwear; gloves as clothing; cycling gloves; socks; caps being headwear; cleats for attachment to cycling shoes; cleats for attachment to sports shoes.
See TMEP §718.02(a).
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods in International Classes 12 and 25 identified above, in the beginning of this Office action, will be deleted from the application.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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.
How to respond. Click to file a response to this nonfinal Office action
/Jonathan Falk/
Jonathan R. Falk
Trademark Examining Attorney
Law Office 111
(571)272-5301
Jonathan.falk@uspto.gov
RESPONSE GUIDANCE