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.

SEARCH OF OFFICE’S 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.

SUMMARY OF ISSUES:

Amended Identification of Goods Required (Partial Requirement)
U.S.-Licensed Attorney Required

AMENDED IDENTIFICATION OF GOODS REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

The wording “semi-processed foams of plastic”, “laminated boards of plastics” “plastic film, other than for wrapping”, “cushioning materials of plastics for packaging”, “chemical fiber, not for textile use”, non-conducting materials for retaining heat”, “insulators”, “plastic semi-worked products in the form of net and mesh”, and “plastic sheets in the form of net and mesh” in the identification of goods is indefinite and must be clarified to specify the common commercial or generic name of the goods. See 37 C.F.R. §2.32(a)(6); 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 word “clothing” and “ready-made clothing” in the identification of goods in International Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods 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).

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 “ready-made clothing”, and then listing the specific types of clothing items.

The wording “non-Japanese style outerclothing”, “slips”, “Japanese traditional clothing”, “thermal supporters”, “mufflers”, “headgear for wear”, “clothes for sports”, “clothes for sports, other than clothes for water sports”, “clothes for water sports”, “and “clothing for gymnastics” in the identification of goods is indefinite and must be clarified to specify the common commercial or generic name of the goods. See 37 C.F.R. §2.32(a)(6); 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 identification of goods contains brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

The wording “wristbands” in the identification of goods in International Class 25 is indefinite and 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, “wristbands as clothing” are in Class 25, “anti-nausea wristbands” are in Class 10, and “silicone wristbands in the nature of bracelets” are in Class 14.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 may be classified in several international classes, any modification to this wording must identify goods in International Class 25 only, the class(es) specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).

Applicant may adopt the following identification of goods, if accurate:

Class 17: Semi-processed plastic substances; semi-processed plastic in the form of sheets; semi-processed plastic in the form of films; semi-processed foams of plastic, namely, {specify, e.g., semi processed plastic in the form of foam}; semi-processed plastic in the form of board; semi-processed plastic in the form of plate; semi-processed plastic in the form of tapes; semi-processed plastic in the form of strips; laminated boards of plastics, namely, {specify, e.g., being plastic laminated panels for use in manufacturing of countertops}; adhesive-coated plastic sheets for use in manufacture; plastic rods and bars; artificial resins, semi-processed; synthetic resins, semi-processed; plastic substances, semi-processed; plastic film for {specify, e.g., packing, cushioning, stuffing, etc.} purposes, other than for wrapping; packing foam in sheet form; cushioning materials of plastics in the nature of {specify, e.g., stuffing} for packaging; chemical fiber thread and yarn, not for textile use; rubber thread and covered rubber yarn, not for textile use; chemical fiber yarn and thread, not for textile use; insulating gloves; adhesive tapes, other than stationery and not for medical or household purposes; non-conducting insulating materials for retaining heat; insulators being {specify, e.g., insulating materials}; insulating materials; plastic semi-worked products being semi-processed plastics in the form of net and mesh; plastic sheets in the form of net and mesh for use in further manufacturing; semi-processed plastic in the form of sponge materials

Class 25: Clothing, namely, {specify, e.g., shorts, pants, shirts, etc.}; ready-made clothing, namely, {specify, e.g., shorts, pants, shirts, etc.}; non-Japanese style outerclothing, namely, {specify, e.g., coats, overcoats, etc.}; jackets; jogging pants; sweat shirts; sweat pants; suits; coats; sweaters; shirts for suits; sport shirts; collars being clothing; nightwear; underwear being underclothing; underclothing; undershirts; corsets being underclothing; combinations being clothing; chemises; drawers being clothing; underpants; slips being underclothing; panties, shorts and briefs; brassieres; swimwear being bathing suits; swimming caps being bathing caps; girdles; teddies being underclothing; babies' pants being underwear; adhesive bras; adhesive brassieres; panties; boxer shorts; bodices being lingerie; bodies being underclothing; shorts; camisoles; tank-tops; tee-shirts; shirts; Japanese traditional clothing, namely, {specify, e.g., kimonos}; sleep masks; aprons being clothing; neck gaiters; socks and stockings other than special sportswear; puttees and gaiters; fur stoles; shawls; scarves being scarfs; Japanese style socks being tabi; Japanese style socks covers being tabi covers; gloves and mittens being clothing; neckties; neckerchieves; bandanas being neckerchiefs; thermal supporters being clothing in the nature of {specify, e.g., thermal socks, thermal underwear, etc.}; mufflers being clothing in the nature of neck scarves; ear muffs being clothing; nightcaps; headgear for wear being headwear; garters; sock suspenders; suspenders being braces; waistbands; belts being clothing; money belts being clothing; footwear other than special footwear for sports; shoes and boots other than special footwear for sports; insoles for shoes and boots; footwear uppers; tips for footwear; inner soles; boot uppers; Japanese style wooden clogs being geta; Japanese style sandals being zori; bath sandals; bath slippers; masquerade costumes; special footwear for sports; special footwear for sports, other than horse-riding boots and windsurfing shoes; golf shoes; soccer shoes; ski boots; snowboarding shoes; gymnastic shoes; climbing boots being mountaineering boots; hockey shoes; baseball shoes; rugby shoes; footwear for track and field athletics; football boots; football shoes; horse-riding boots; windsurfing shoes; clothes for sports, namely, {specify, e.g., jerseys, uniforms, etc.}; clothes for sports, other than clothes for water sports, namely, {specify, e.g., jerseys, uniforms, etc.}; wristbands as clothing; clothes for water sports, namely, {specify, e.g., swimsuits, swimming trunks, etc.}; layettes being clothing; ready-made linings being parts of clothing; clothing for gymnastics, namely, {specify, e.g., leotards, tights, etc.}; uniforms; sandals; footwear; soles for footwear; insoles for footwear; sports shoes; shoes; boots; boots for sports

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 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 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 ATTORNEY REQUIRED

Applicant must be represented by a U.S.-licensed attorney. 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.

To appoint 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).

RESPONSE GUIDELINES

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(s) and/or requirement(s) 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.

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.

/Katerina D. Sparer/

Examining Attorney, Law Office 120

United States Patent and Trademark Office

katerina.sparer@uspto.gov

(571) 272-4542

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