United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79279063
Mark: STOIC
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Correspondence Address: Hogan Lovells International LLP
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Applicant: Canyon Bicycles GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1515278
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
IDENTIFICATION OF GOODS REQUIREMENT
The wording in the identification of goods, as specified below, is indefinite and must be clarified because the nature of the goods is not specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 12: Bicycles; bicycle parts, namely, bicycle frames, bicycle tires, rims for wheels of
bicycles, wheel sprockets for bicycles, tires for bicycles, tubeless tires for bicycles, inner tubes for bicycles, chains for bicycles, chain rings being chain
guards for bicycles, brakes for bicycles and cycles, brake levers for bicycles, handlebars for bicycles, handlebar
extensions for bicycles, handle grips for bicycles, handlebar-end plugs for bicycles, bicycle racks for vehicles, saddles for bicycles, bicycle seat posts, seat clamps for
bicycles, pedals for bicycles, shock absorbers for bicycles, handle bar vibration dampers for bicycles, bicycle forks, bicycle wheel hubs, inner wheel bearings for bicycles, quick releases for bicycles, headsets for bicycles provide a rotatable interface between the bicycle fork and the bicycle frame,
handle bar stems for bicycles, shifting systems for bicycles in the nature gear shifts, gear shift handles for bicycles, cranks for
bicycles, gears for bicycles, bicycle bells, panniers adapted for bicycles, transporting bags adapted for bicycles and bicycle parts in the nature of rack trunk bags, spokes for
bicycles, pannier bag and water bottle holders adapted for bicycles, saddle covers for bicycles, bicycle stands and mudguards for bicycles, anti-theft
devices for bicycles and anti-theft alarms for bicycles; bicycle accessories, namely, air pumps and its parts for bicycles, chain guides for bicycles, eases cases
specially adapted for holding bicycle chains, chain catchers for bicycles, handlebar grip tapes for bicycles, chain accessories for bicycles in the nature of
drive chains, as far as included in this class
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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 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.
U.S.-LICENSED TRADEMARK ATTORNEY REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
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
How to respond. Click to file a response to this nonfinal Office action.
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
RESPONSE GUIDANCE