Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1573920

 

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 (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). 

 

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 USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Identification of Goods Amendment Required
• Description of Mark Required
• Applicant’s Email Address Required
• U.S. Counsel Rule Requirement

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

 

Applicant must clarify some of the wording in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the exact nature of the goods. 

 

Furthermore, 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 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 brackets from the identification and incorporate any bracketed information into the description of the goods.

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following identification, if accurate:

 

International Class 018: Leather and imitations of leather; trunks being luggage and suitcases; umbrellas and parasols; whips, harness for horses and saddlery; clothing for pets; saddlery; key cases; vanity cases, not fitted; trunks being luggage; travelling trunks; bags, namely, ______ {please specify, e.g., travelling bags}; slings for carrying infants; bags for sports; chain mesh purses; purses; handbags; leather travelling bag sets [leatherware]; briefcases; school bags; coverings of skins in the nature of synthetic and artificial fur [furs]; horse blankets; imitation of leather, namely, moleskin [imitation of leather]; umbrella covers; leather leashes; imitation leather; suitcase handles; pouch baby carriers; parasols; umbrellas; animal skins, and  hides; notecases, namely, credit card cases [notecases]; music cases; pocket wallets; leather and imitation leathers for use as furniture coverings of leather; beach bags; travelling bags; wheeled shopping bags; leather or leather-board boxes; hat boxes of leather; valises; attaché cases; leather briefcases; garment bags for travel; rucksacks

 

International Class 025: Mufflers, namely, neck tube scarves [mufflers]; clothing, namely, ear muffs [clothing]; clothing layettes [clothing]; corselets; corsets being clothing, stockings; coats; shirts; suits; beach clothes, namely, ______ {please specify, e.g., beach cover-ups}; masquerade costumes; neckties; ascots; bathing caps; shower caps; clothing, namely,  headbands [clothing]; pocket squares; scarves; fittings of metal for footwear in the nature of heelpieces; ready-made linings being parts of clothing [parts of clothing]; clothing, namely,  gabardines [clothing]; spats; clothing, namely, jackets [clothing]; fishing vests; garters; skirts; jumper dresses; clothing, namely, aprons [clothing]; girdles; clothing, namely, gloves [clothing]; mittens; ski gloves; welts for footwear; waterproof clothing, namely, ______ {please specify clothing articles, e.g., waterproof jackets and pants}; ready-made linings being parts of clothing; paper clothing, namely, paper hats for use as clothing items; Clothing being knitwear,  namely, ______{please indicate specific knitted clothing items, e.g., shirts, dresses, sweaters} [clothing]; jerseys [clothing]; leggings resembling trousers [trousers]; liveries; hosiery; swimsuits; sweaters; clothing, namely, muffs [clothing]; maniples; pelerines; mantillas; sleep masks; miniskirts; miters, namely, hats [hats]; pants; bathing trunks; waistcoats; clothing, namely, babies' pants [clothing]; trousers; parkas; pelisses; furs being clothing [clothing]; shirt yokes; pyjamas; dressing gowns; cuffs; ponchos; athletic sweaters; tips for footwear; stocking suspenders; sock suspenders; brassieres; heelpieces for footwear; heelpieces for stockings; sandals; bath sandals; saris; sarongs; shoes; esparto shoes or sandals; bath sandals; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; slippers; deck shoes; shawls; scarves; underpants; lace boots; wimples; topcoats; outer-clothing, namely, jackets; dress shields; trouser straps; petticoats; slips being undergarments [undergarments]; shirt fronts; half-boots; boots; boots for sports; fur stoles; soles for footwear; inner soles; heels; pockets for clothing; tee-shirts; togas; footwear uppers; turbans; wet suits for water-skiing; combinations [clothing article]; uniforms; clothing, namely, veils [clothing]; visors being headwear [headwear]; berets; hats; headgear being headwear; wooden shoes; clothing of imitations of leather, namely, belts made from imitation leather; clothing of leather, namely, _____ {please specify, e.g., leather belts}; motorists' clothing, namely, _____ {please specify, e.g., motorcycle jackets}; cyclists' clothing, namely, _____ {please specify, e.g., cyclists' jerseys}; clothing for gymnastics, namely, _____ {please specify, e.g., leotards}; sportswear, namely, _____ {please specify, e.g., sports jerseys}; riding clothes, namely, _____ {please specify, e.g., riding jackets and boots}; dresses; bath robes; clothing, namely, belts (clothing); gilets; cabans; Bermuda shorts; mufflers as neck scarves

 

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).

 

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.

 

DESCRIPTION OF MARK REQUIRED

 

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 a shield divided into four squares with the upper left square shaded with a tree in the center, and to its right and immediately below the upper right and left lower squares each have a shaded five point star, and the lower right square is shaded and has an image of a bird.  Immediately below the shield appears a shaded wreath design.

 

APPLICANT’S EMAIL ADDRESS REQUIRED

 

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. 

 

U.S. COUNSEL RULE REQUIREMENT

 

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).

 

ASSISTANCE

 

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. 

 

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

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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.