Offc Action Outgoing

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).

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.

No Conflicting Marks Noted

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.

Significance Inquiry

To permit proper examination of the application, applicant must explain whether the wording “carry on” in the mark has any significance in the bicycle trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

Identification of Goods

The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.

The current identification specifies: Bicycles; bicycle parts; 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 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; saddles for bicycles; bicycle seat posts; seat clamps for bicycles; pedals for bicycles; shock absorbers for bicycles; vibration dampers for bicycles; bicycle forks; bicycle hubs; inner bearings for bicycles; quick releases for bicycles; headsets for bicycles; stems for bicycles; shifting systems for bicycles; shift handles for bicycles; cranks for bicycles; gears for bicycles; bicycle bells; panniers adapted for bicycles; transporting bags adapted for bicycles and bicycle parts; spokes for bicycles; bag and bottle holders adapted for bicycles; saddle covers for bicycles; bicycle stands and mudguards for bicycles; anti-theft devices for bicycles; anti-theft alarms for bicycles; bicycle accessories; air pumps and its parts for bicycles; chain guides for bicycles; cases specially adapted for holding bicycle chains; chain catchers for bicycles; handlebar tapes for bicycles; chain accessories for bicycles

Applicant may adopt the following wording, if accurate:

Bicycles; bicycle parts, namely, {indicate specific parts, e.g., derailleurs, brakes, chains, handle bars}; 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 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, namely, [more specifically describe goods, e.g., bicycle racks for vehicles; note that bicycle storage racks of metal specify Class 6 goods]; saddles for bicycles; bicycle seat posts; seat clamps for bicycles; pedals for bicycles; shock absorbers for bicycles; vibration dampers for bicycles; bicycle forks; bicycle hubs; inner bearings for bicycles; quick releases for bicycles, namely, [more specifically describe goods in Class 12]; headsets for bicycles, namely, headsets which provide a rotatable interface between the bicycle fork and the bicycle frame; handle bar stems for bicycles; shifting systems, for bicycles, comprised of [indicate specify components]; shift handles for bicycles; cranks for bicycles; gears for bicycles; bicycle bells; panniers adapted for bicycles; transporting bags adapted for bicycles and bicycle parts; spokes for bicycles; bag and bottle holders adapted for bicycles; saddle covers for bicycles; bicycle stands and mudguards for bicycles; anti-theft devices for bicycles; anti-theft alarms for bicycles; bicycle accessories, namely, [describe specific accessories in Class 12]; air pumps and their component parts, for bicycles; chain guides for bicycles; cases specially adapted for holding bicycle chains; chain catchers for bicycles; handlebar grip tape for bicycles; chain accessories for bicycles, namely, [describe specific accessories in Class 12].

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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).

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 Must be Represented by a U.S.-Licensed Attorney

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).

How to respond. Click to file a response to this nonfinal Office action.

/Rudy R. Singleton/

U.S. Patent and Trademark Office

Trademark Examining Attorney, Law Office 102

571-272-9262

RUDY.SINGLETON@USPTO.GOV

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.