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. 79289472
Mark: KING OF TRAINERS
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Correspondence Address: |
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Applicant: JD Sports Fashion Plc
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1540472
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
U.S. LICENSED ATTORNEY REQUIRED
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).
Applicant should note the following additional requirement.
IDENTIFICATION OF GOODS AND SERVICES
Class 25
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Examples of acceptable identifications for clothing in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after “clothing” and then listing the specific types of clothing items.
In addition, the wording “HEADGEAR” must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
In addition, the wording “SPORTSWEAR” is indefinite and must be clarified to indicate the specific types of sportswear provided, such as “sports bras” or “sports shirts.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Lastly, “BELTS” is indefinite and must be clarified to indicate that the goods are belts being clothing in order to be properly classified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 35
In addition, the wording “BUSINESS ADMINISTRATION OF RETAIL STORES AND ONLINE RETAIL STORES; BUSINESS MANAGEMENT OF RETAIL STORES AND ONLINE RETAIL STORES; … PRESENTATION OF GOODS ON COMMUNICATION MEDIA, FOR RETAIL PURPOSES” is indefinite and must be clarified to better identify the nature of the services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In addition, the wording “THE BRINGING ROGETHER OF … A VARIETY OF GOODS” is indefinite and must be clarified in both instances to better identify the types of goods provided through both on-line retail stores and retail outlets, and that the goods are not transported. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amended Wording
In sum, applicant may substitute the following wording, if accurate:
· International Class
035: Advertising services; promoting the sale of goods and services of others by {specify how communication is facilitated between consumers and retailers,
e.g., distributing coupons, conducting promotional contests, distribution of printed material etc.}; business administration services, namely, administration of business engaged
in of retail stores and online retail stores services; business management services, namely, administration of business engaged in
retail stores and online retail stores services; marketing services; providing television home shopping services in the field of general consumer
merchandise; the bringing together for the benefit of others of {indicate field or type of goods, e.g., clothing, furniture, household goods, etc.}, excluding the transport
thereof, to be sold online, enabling customers to conveniently view and purchase those goods by means of on-line retail stores; the bringing together for the benefit of
others of {indicate field or type of goods, e.g., clothing, furniture, household goods, etc.}, excluding the transport thereof, enabling customers to conveniently view and
purchase those goods by means of in retail outlets.
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 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 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.
Applicant should note the following additional requirement.
LEGAL ENTITY REQUIRES CLARIFICATION
The designation “PLC” is included in applicant’s name; however, the legal entity is set forth as a “limited liability company.” Generally, “PLC” identifies a “public limited company,” and not a limited liability company. Therefore, applicant must specify whether the legal entity is a limited liability company or a public limited company and amend the application accordingly. TMEP §803.03(h); see 37 C.F.R. §§2.32(a)(2), (a)(3)(ii), 2.61(b).
If applicant is a public limited company, applicant must amend the legal entity and provide the foreign country under whose laws it is organized. 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h). If applicant is a limited liability company, applicant must provide the legal name of the LLC and foreign country of organization. See 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
Applicant should note the following additional requirement.
MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of the stylized rendering of a shield, inside of which is the wording “KING” above the wording “OF TRAINERS” with the wording “OF” underlined, all of which is beneath the stylized rendering of a crown.
For this application to proceed, applicant must explicitly address each refusal and 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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirement in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Lucy Ellen Browne
Examining Attorney
Law Office 125
571-270-0961
lucy.browne@uspto.gov
RESPONSE GUIDANCE