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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).

Applicant has applied for the mark “LIVE FAST” in special form for use in connection with the following:

International Class 14 Bonnet pins not of precious metal; bonnet pins of precious metal

International Class 16 Printed packaging materials of paper; cartons of cardboard for packaging; containers of paper for packaging purposes; cartons of cardboard for packaging; clothing patterns; bags made of paper for packaging; bags made of paper for packaging purposes; printed matter; printed material in the nature of color samples; labels of paper; labels made of paper; labels (not of textiles); paper flags; paper bunting; printed labels of paper; printed paper labels; printed paper signs; paper badges; paper stickers; paper banners; pads of paper; paper tapes; paper gift wrap bows; labels of paper; flags of paper; paper bunting; paper boxes; bags made of paper for packaging; paper shopping bags; posters made of paper; signboards of cardboard and paper; patterns for making clothes; type [numerals and letters]; bags [envelopes, pouches] of paper or plastics, for packaging; wrapping materials made of paper; cartons of cardboard for packaging; bags made of paper for packaging; advertising signs of paper; signboards of paper or cardboard; advertisement boards of paper

International Class 24 Banners of textile; cotton fabrics; fabrics made from cotton, other than for insulation; printed textile piece goods; elastic fabrics for clothing; labels (of textiles); fibre fabrics for use in the manufacture of articles of clothing; fabric linings for clothing; fabric linings for headgear; textile fabrics for the manufacture of clothing; woven fabrics for making up into articles of clothing; fabrics for shirts; calico; jersey [fabric]; textile adhesive labels; laminated fabrics; fabrics for use as linings in clothing; textile fabrics for the manufacture of clothing; fabrics for shirts; materials for use in making clothes; tags of textile for attachment to clothing; textile fabric piece goods for use in the manufacture of clothing; textile fabric piece goods for use in the manufacturing of clothing; textile fabric piece goods for use in the manufacture of articles of clothing; textile fabric piece goods for use in the manufacturing of articles of clothing; labels of textile for identifying clothing; labels of textile for identifying articles of clothing; textile labels for marking clothing; fabrics; apparel fabrics; textile fabrics for the manufacture of clothing; textile fabrics for use in the manufacture of wallets; fabric for manufacturing women's outerwear; fabric for use in the manufacture of purses; fabric for manufacturing men's outerwear; textile fabrics for use in the manufacture of sportswear; materials for use in making clothes; waterproof fabrics for use in the manufacture of trousers; waterproof fabrics for use in the manufacture of jackets; textiles for making up into articles of clothing; woollen fabrics for use in the manufacture of jackets; woollen fabrics for use in the manufacturing of jackets; woollen fabrics for use in the manufacture of trousers

International Class 25 Arm warmers [clothing]; clothing made of fur; layettes [clothing]; babies' pants [clothing]; bandanas [neckerchiefs]; printed t-shirts; imitation leather clothing; motorists' clothing; bridesmaids wear; christening robes; clothing for wear in judo practices; clothing for children; motorcyclists' clothing of leather; articles of clothing; articles of clothing made from leather; paper clothing; clothing for martial arts; articles of clothing for horse-riding [other than riding hats]; sportswear; clothing for fishermen; boys' clothing; clothing for wear in wrestling games; maternity clothing; wearable garments and clothing, namely, shirts; visors; visors [headwear]; boas [necklets]; chaps [clothing]; topcoats; three piece suits [clothing]; pocket squares; gloves; bow ties; money belts [clothing]; knitwear [clothing]; knit jackets; golf pants, shirts and skirts; belts [clothing]; gloves [clothing]; hand warmers [clothing]; yashmaks; shirts; shirts for suits; casual shirts; collared shirts; open-necked shirts; button down shirts; nighties; trousers; shorts; trousers of leather; trousers for babies; trousers for children; sweatpants; ski trousers; snowboard trousers; pantsuits; culotte skirts; culotte skirts [skirts]; trouser straps; suspenders; garters; suspender belts for men; jackets [clothing]; jackets being sports clothing; fur jackets; fishing vests; sleeved jackets; sleeveless jackets; jackets and socks; snowboard jackets; weatherproof jackets; men's and women's jackets, coats, trousers, vests; jogging sets [clothing]; sweatpants [clothing]; shorts; sets [clothing]; headgear; leather headwear; sports headgear [other than helmets]; children's headwear; peaked headwear; corsets; shoulder wraps; ties; yashmaghs; short-sleeved or long-sleeved t-shirts; short trousers; short-sleeve shirts; cowls [clothing]; skull caps; warm-up suits; long jackets; long sleeve pullovers; leather belts [clothing]; casual trousers; leggings [trousers]; light-reflecting jackets; cuffs; caps; caps [headwear]; cap peaks; cap peaks [clothing]; cap peaks [hat maker goods]; cap peaks [headgear]; nightwear; womens' outer clothing; articles of outer clothing; ear muffs [clothing]; overalls; paper hats [clothing]; paper hats for use as clothing items; party hats [clothing]; furs [clothing]; fur coats and jackets; polo knit tops; pullovers; slipovers [clothing]; roll necks [clothing]; rugby tops; bush jackets; mufflers [clothing]; sun visors; veils [clothing]; headdresses [veils]; shoulder wraps; sweatbands; sweatpants [clothing]; aprons [clothing]; shorts [clothing]; playsuits [clothing]; quilted jackets [clothing]; headbands [clothing]; t-shirts; togas; tops [clothing]; kerchiefs [clothing]; outerclothing; bottoms [clothing]; warm-up jackets; wind resistant and waterproof jackets; weatherproof clothing; waterproof outerclothing; waterproof trousers; waterproof jackets; oilskins [clothing]; chefs' whites; weatherproof jackets; puttees and gaiters; windproof jackets; nappy pants [clothing]; wind resistant jackets [clothing]; wind resistant jackets; wind stopper jackets; windbreaker jackets; hosiery; weather resistant outer clothing; thermally insulated clothing; topcoats; over-trousers

International Class 26 Dressmakers' articles, namely, accessories for apparel, sewing articles and decorative textile articles [haberdashery]; artificial blossoms for attachment to clothing; patches for clothing; patches for use in the repair of clothing; fastenings for suspenders; non-metallic eyelets for clothing; borders and edgings for clothing; borders for hemming clothing; snap buttons for clothing; elastic strips incorporating grips for securing trousers to riding boots; elastic strips incorporating clips for securing trousers to riding boots; embroidered patches for clothing; belt buckles of precious metal [for clothing]; trouser clips for cyclists; buckles [clothing accessories]; clips for trousers for cyclists; fastenings for clothing; buttons for clothing; buttons for articles of clothing; twisted cords for clothing; twisted cords for rimming clothing; eyelets of metal for clothing; novelty buttons [badges] for wear; bindings for hemming clothing; name tapes of textile material for identifying clothing; name tapes of textile material for marking clothing; buckles [clothing accessories]; ornamental cloth patches; buckles of precious metal [clothing accessories]; buckles [clothing accessories]; cord for clothing; shoulder pads for clothing; embroidery for garments; name tags of textile for identifying clothing; name tags of textile for marking clothing; reinforcing tapes for clothing; eyelets for clothing

International Class 35 Retail store services in the field of clothing; retail services in relation to clothing; retail services connected with the sale of clothing accessories; retail services in relation to headgear; wholesale services in relation to clothing; wholesale services in relation to headgear; online retail store services relating to clothing; online retail services relating to clothing; mail order retail services for clothing; mail order retail services connected with clothing accessories

International Class 39 Storage of clothes; storage of clothing; storage of articles of clothing; transportation of clothing

International Class 40 Monogramming of clothes; tailoring or dressmaking; tailoring services; application of appliques to textiles; application of motifs to textiles; t-shirt printing; fabric bleaching; photographic etching of articles of clothing; dyeing of clothing; dyeing of cloth or clothing; hot pressing of clothing [forming of clothing]; waterproofing of clothing; permanent press treatment of items of clothing; permanent press treatment of clothing; permanent press treatment of articles of clothing; permanent press treatment of fabrics; pre-shrinking of clothing; pre-shrinking of articles of clothing; shrinking of items of clothing; custom imprinting of clothing with decorative designs; laminating of textiles; sewing; needlework and dressmaking; monogramming of clothes; pre-shrinking of clothing; pre-shrinking of items of clothing; hot pressing of clothing [forming of clothing]; waterproofing of clothing; cloth cutting; clothing alteration; clothing alteration [customized services]

International Class 42 Textile design services; fashion design; design for others in the field of clothing; design of printed material; design of printed matter; fashion design for clothing; design for others in the field of clothing; fashion design for articles of clothing; design of logos for t-shirts; design for others in the field of clothing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS

· PRIOR FILED APPLICATION

PARTIAL REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION- AS TO CLASSES 24, 25, 26, 35, AND 42
IDENTIFICATION OF GOODS AND/OR SERVICES
MARK DESCRIPTION
U.S. ATTORNEY REQUIRED

PRIOR FILED APPLICATION

The filing date of pending U.S. Application Serial No. 88573265 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

PARTIAL REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION- AS TO CLASSES 24, 25, 26, 35, AND 42

THIS PARTIAL REFUSAL APPLIES TO CLASSES 24, 25, 26, 35, AND 42 ONLY

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4159524, “LIVE FAST”. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

In this case, a likelihood of confusion is present because there are similarities between the compared marks and relatedness of the compared goods and/or services.

SIMILARITY OF THE MARKS

The applicant’s and registrant’s respective marks, “LIVE FAST” and “LIVE FAST”, are similar in appearance, sound, connotation, and commercial impression.

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).

In the present case, applicant’s mark is “LIVE FAST” and registrant’s mark is “LIVE FAST”. The literal elements of the marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because the literal elements of the marks are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.

Therefore, the marks are confusingly similar.

RELATEDNESS OF THE GOODS AND/OR SERVICES

The applicant’s relevant goods and/or services are listed below:

The registrant’s relevant goods and/or services are listed below:

International Class 25 women's and men's clothing, namely, jackets, hats, belts, denim jeans, denim jackets, jeans, jean jackets, leather jackets, t-shirts, polo shirts, shirts, baby tees, tops, dresses, hooded sweatshirts, sweatshirts, thermal shirts, beanies, shorts, board shorts, long sleeve shirts, short sleeve shirts, leggings, caps

The applicant’s and registrant’s goods and/or services are related and could give rise to the mistaken belief that they emanate from the same source.

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

In this case, applicant’s and registrant’s goods and/or services could give rise to the mistaken belief that they emanate from the same source because they are commonly provided by the same entity. For example, the attached Internet evidence, consisting of third-party clothing webpages, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function. See the attached internet evidence showing that the same entity commonly provides clothing, fabrics for clothing, accessories for clothing, retail store services in the field of clothing, and fashion design:

Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

Upon encountering “LIVE FAST” used on applicant’s goods and/or services and “LIVE FAST” used on registrant’s goods, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source. Because the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is not entitled to registration under Section 2(d) of Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

IDENTIFICATION OF GOODS AND/OR SERVICES

Applicant must clarify the below listed wording in the identification of goods and/or services because the respective identifications are indefinite and/or too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

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).

The identification of goods and/or services contains parentheses and 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 and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services 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 parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

International Class 14:

Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods in the identified international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 14 is indefinite and does not appear to describe any goods in that class: “Bonnet pins not of precious metal; bonnet pins of precious metal”. See TMEP §1904.02(c)(iii).

Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods and/or services in International Class 14 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).

If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).

International Class 16:

Applicant is advised to delete or modify the duplicate entries in the identification of goods for “cartons of cardboard for packaging; labels of paper; paper bunting; bags made of paper for packaging”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).

The wordings “clothing patterns; printed matter; labels (not of textiles); pads of paper; patterns for making clothes; type [numerals and letters]; bags [envelopes, pouches] of paper or plastics, for packaging; advertisement boards of paper” are indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

International Class 24:

Applicant is advised to delete or modify the duplicate entries in the identification of goods for “textile fabrics for the manufacture of clothing; fabrics for shirts; materials for use in making clothes”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

The wordings “printed textile piece goods; fibre fabrics for use in the manufacture of articles of clothing; headgear; textile fabrics for the manufacture of clothing; for making up into; fabrics for shirts; laminated fabrics; materials for use in making clothes; fabrics; fabric; apparel fabrics; sportswear; textiles for making up into articles of clothing” are indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

International Class 25:

Applicant is advised to delete or modify the duplicate entries in the identification of goods for “gloves; sweatpants; shorts; cap peaks; shoulder wraps; weatherproof jackets; wind resistant jackets; topcoats; waterproof jackets; culotte skirts”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

The following wordings are indefinite and must be clarified because the nature of the goods is not clear:

clothing made of fur; imitation leather clothing; motorists' clothing; bridesmaids wear; clothing for children; motorcyclists' clothing of leather; articles of clothing; articles of clothing made from leather; paper clothing; clothing for martial arts; articles of clothing for horse-riding [other than riding hats]; sportswear; clothing for fishermen; boys' clothing; maternity clothing; visors; knitwear; jogging sets; sets; headgear; sports headgear [other than helmets]; corsets; ties; cowls; caps; outer clothing; articles of outer clothing; paper hats; roll necks; mufflers; sun visors; headdresses; tops; outerclothing; bottoms; weatherproof clothing; waterproof outerclothing; chefs' whites; gaiters; weather resistant outer clothing; thermally insulated clothing

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The following wordings in the identification of goods are indefinite and must be clarified because the nature of the goods is not clear:

Yashmaks; yashmaghs; oilskins

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Applicant must amend this wording 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 wording “party hats” is indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the subject wording causes confusion with “paper party hats” and “plastic party hats” in Class 28. Headwear in the nature of fashion hats worn to special events such as weddings, horse races, or religious services still function as apparel and thus, are classified in Class 25.

International Class 26:

Applicant is advised to delete or modify the duplicate entry in the identification of goods “buckles”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

The wordings “Dressmakers' articles, namely, accessories for apparel, sewing articles and decorative textile articles [haberdashery]; patches for clothing; patches for use in the repair of clothing; fastenings for clothing; twisted cords for clothing; twisted cords for rimming clothing; bindings; name tapes of textile material for identifying clothing; name tapes of textile material for marking clothing; buckles; cord for clothing; reinforcing tapes for clothing” are indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The following wordings in the identification of goods are indefinite and must be clarified because the nature of the goods is not clear:

elastic strips incorporating grips for securing trousers to riding boots; elastic strips incorporating clips for securing trousers to riding boots

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods in the identified international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 26 is indefinite and does not appear to describe any goods in that class: “name tags of textile for identifying clothing; name tags of textile for marking clothing”. See TMEP §1904.02(c)(iii).

Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods and/or services in International Class 26 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

International Class 35:

The following wordings are indefinite and must be clarified because the nature of the services is not clear:

retail services ; wholesale services; mail order retail services; in relation to ; relating to; connected with

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The wording “headgear” is indefinite and must be clarified because the nature of the subject goods s is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

International Class 40:

Applicant is advised to delete or modify the duplicate entries in the identification of goods for “monogramming of clothes; pre-shrinking of clothing; hot pressing of clothing; waterproofing of clothing”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

The following wordings are indefinite and must be clarified because the nature of the services is not clear:

tailoring or dressmaking; tailoring services; application of appliques to textiles; application of motifs to textiles; t-shirt printing; photographic etching of articles of clothing; hot pressing of clothing; laminating of textiles; clothing alteration

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

International Class 42:

Applicant is advised to delete or modify the duplicate entry in the identification of goods for “design for others in the field of clothing”. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

The following wordings are indefinite and must be clarified because the nature of the services is not clear:

design for others in the field of clothing; design of printed material; design of printed matter; design of logos for t-shirts;

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Suggested Amendment:

Applicant may substitute the following wording, if accurate (additions in bold):

International Class 16 Printed packaging materials of paper; cartons of cardboard for packaging; containers of paper for packaging purposes; printed patterns for making clothing; bags made of paper for packaging; bags made of paper for packaging purposes; printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of {indicate subject matter}; printed material in the nature of color samples; labels of paper; labels made of paper; bar code labels, not of textiles; paper flags; paper bunting; printed labels of paper; printed paper labels; printed paper signs; paper badges; paper stickers; paper banners; writing pads of paper; paper tapes; paper gift wrap bows; flags of paper; paper boxes; paper shopping bags; posters made of paper; signboards of cardboard and paper; printed patterns for making clothes; typeface; paper and plastic bags for packaging, namely, pouches; envelopes; wrapping materials made of paper; advertising signs of paper; signboards of paper or cardboard; printed advertisement boards of paper

International Class 24 Banners of textile; cotton fabrics; fabrics made from cotton, other than for insulation; printed textile piece goods, namely, labels; elastic fabrics for clothing; textiles labels; synthetic fibre fabrics for use in the manufacture of articles of clothing; fabric linings for clothing; fabric linings for headwear, namely, {specify type, e.g., hats, caps, etc.}; textile fabrics for the manufacture of clothing; woven fabrics for use in the manufacture of articles of clothing; jersey fabrics for shirts; calico; jersey fabric; textile adhesive labels; laminated fabrics for textile use; fabrics for use as linings in clothing; materials for use in making clothes, namely, vinyl and cloth textiles; tags of textile for attachment to clothing; textile fabric piece goods for use in the manufacture of clothing; textile fabric piece goods for use in the manufacturing of clothing; textile fabric piece goods for use in the manufacture of articles of clothing; textile fabric piece goods for use in the manufacturing of articles of clothing; labels of textile for identifying clothing; labels of textile for identifying articles of clothing; textile labels for marking clothing; polyester fabrics; elastic apparel fabrics; textile fabrics for use in the manufacture of wallets; textile fabrics for use in the manufacturing of women's outerwear; textile fabric for use in the manufacture of purses; textile fabric for manufacturing men's outerwear; textile fabrics for use in the manufacture of sportswear apparel; waterproof fabrics for use in the manufacture of trousers; waterproof fabrics for use in the manufacture of jackets; textile fabrics for manufacturing clothing; woollen fabrics for use in the manufacture of jackets; woollen fabrics for use in the manufacturing of jackets; woollen fabrics for use in the manufacture of trousers

International Class 25 Arm warmers being clothing; clothing made of fur, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; clothing layettes; babies' pants; bandana neckerchiefs; printed t-shirts; imitation leather clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; motorists' clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; bridesmaids wear, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; christening robes; clothing for wear in judo practices; clothing for children, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; motorcyclists' clothing of leather, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; articles of clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; articles of clothing made from leather, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; paper clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; clothing for martial arts, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; articles of clothing for horse-riding, other than riding hats, , namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; sportswear clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; clothing for fishermen, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; boys' clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; clothing for wear in wrestling games; maternity clothing, namely, {indicate specific items, e.g., shirts, pants, shorts, etc.}; wearable garments and clothing, namely, shirts; cap visors; visors being headwear; boas; chaps; topcoats; three piece suits; pocket squares; gloves; bow ties; money belts; knitwear, namely, {indicate specific knitted clothing items, e.g., shirts, dresses, sweaters, etc.}; knit jackets; golf pants, shirts and skirts; belts; clothing, namely, hand warmers; yashmaks in the nature of veils; shirts; shirts for suits; casual shirts; collared shirts; open-necked shirts; button down shirts; nighties; trousers; shorts; trousers of leather; trousers for babies; trousers for children; sweatpants; ski trousers; snowboard trousers; pantsuits; culotte skirts; trouser straps; suspenders; garters; suspender belts for men; jackets; jackets being sports clothing; fur jackets; fishing vests; sleeved jackets; sleeveless jackets; jackets and socks; snowboard jackets; weatherproof jackets; men's and women's jackets, coats, trousers, vests; jogging outfit sets; short sets; headwear; leather headwear; sports headwear, other than helmets, namely baseball caps; children's headwear; peaked headwear; corsets being underclothing; shoulder wraps; ties as clothing; yashmaghs headwear; short-sleeved or long-sleeved t-shirts; short trousers; short-sleeve shirts; cowls clothing; skull caps; warm-up suits; long jackets; long sleeve pullovers; leather belts; casual trousers; trouser leggings; light-reflecting jackets; cuffs; headwear being caps; cycling caps; cap peaks; cap peaks; cap peaks being headwear; nightwear; womens' outerwear clothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; articles of outer clothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; ear muffs; overalls; clothing in the nature of paper hats; paper hats for use as clothing items; fashion hats; fur cloaks; fur coats and jackets; polo knit tops; pullovers; slipovers; clothing in the nature of roll neck blouses; rugby tops; bush jackets; mufflers as neck scarves; sun visors being headwear; veils; veil headdresses; sweatbands; aprons; playsuits; quilted jackets; headbands; t-shirts; togas; tops being clothing; kerchiefs; outerclothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; bottoms being clothing; warm-up jackets; wind resistant and waterproof jackets; weatherproof clothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; waterproof outerclothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; waterproof trousers; oilskins, namely, waterproof {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; chefs' whites, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; puttees; leg gaiters; windproof jackets; nappy pants; wind resistant jackets; wind stopper jackets; windbreaker jackets; hosiery; weather resistant outer clothing, namely, {indicate specific clothing items, e.g., coats, hats, gloves, etc.}; thermally insulated clothing, namely, socks; over-trousers

International Class 26 Dressmakers' articles, namely, accessories for apparel in the nature of charms for attachment to zipper pulls and buttons, sewing articles in the nature of sewing kits, and decorative textile articles in the nature of haberdashery ribbons and braids; artificial blossoms for attachment to clothing; ornamental cloth patches for clothing; cloth patches for use in the repair of clothing; fastenings for suspenders; non-metallic eyelets for clothing; borders and edgings for clothing; borders for hemming clothing; snap buttons for clothing; elastic shoe fasteners in the nature of elastic strips incorporating grips for securing trousers to riding boots; elastic shoe fasteners in the nature of elastic strips incorporating clips for securing trousers to riding boots; embroidered patches for clothing; belt buckles of precious metal; trouser clips for cyclists; clothing buckles; clips for trousers for cyclists; fastenings for clothing, namely, snap buttons; buttons for clothing; buttons for articles of clothing; trimmings for clothing; clothing trimmings; eyelets of metal for clothing; novelty buttons for wear; seam bindings for hemming clothing; fabric appliques for identifying clothing; fabric appliques for marking clothing; buckle accessories for clothing; ornamental cloth patches; buckles clothing accessories of precious metal; decorative cord for clothing; shoulder pads for clothing; embroidery for garments; reinforcing tapes for clothing, namely, double-stick tape for affixing clothing to the body; eyelets for clothing

International Class 35 Retail store services in the field of clothing; retail discount store services in the field of clothing; pop-up retail store services featuring clothing accessories; online retail store services featuring headwear; wholesale retail store services in the field of clothing; wholesale retail store services featuring headwear; online retail store services in the field of clothing; online retail services featuring clothing; mail order catalog services featuring clothing; mail order catalog services featuring clothing accessories

International Class 39 Storage of clothes; storage of clothing; storage of articles of clothing; transportation of clothing

International Class 40 Monogramming of clothes; custom tailoring; dressmaking; custom tailoring services; sewing services, namely, application of appliques to textiles; sewing services, namely, application of motifs to textiles; custom imprinting of t-shirts; fabric bleaching; custom imprinting, namely, photographic etching of articles of clothing; dyeing of clothing; dyeing of cloth or clothing; hot permanent pressing treatment of clothing; waterproofing of clothing; permanent press treatment of items of clothing; permanent press treatment of clothing; permanent press treatment of articles of clothing; permanent press treatment of fabrics; pre-shrinking of clothing; pre-shrinking of articles of clothing; shrinking of items of clothing; custom imprinting of clothing with decorative designs; laminating of textiles, namely, fiber-based substrates used in manufacture of cartons for consumer products; sewing; needlework and dressmaking; pre-shrinking of items of clothing; cloth cutting; custom clothing alteration; custom alteration of clothing

International Class 42 Textile design services; fashion design; textile design for others in the field of clothing; visual design of printed material, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; visual design of printed matter, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; fashion design for clothing; fashion design for articles of clothing; graphic designs of logos for t-shirts

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.

MARK DESCRIPTION

Applicant must submit a description of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. In this case, the drawing of the mark is not in standard characters.

The following description is suggested, if accurate: The mark consists of the stylized wording “LIVE FAST”.

U.S. 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 OPTIONS

For this application to proceed, 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.

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.

Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.

Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.

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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.

/Shari Gadson/

Trademark Examining Attorney

Law Office 120

United States Patent and Trademark Office

571-272-9319

shari.gadson@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.

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LIVE FAST

LIVE FAST DIE YOUNG Clothing GmbH

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