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. 1571252

 

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). 

 

INTRODUCTION

 

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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.  See additional information below.

 

SUMMARY OF ISSUES

 

• Prior-Filed Application Advisory
• Identification of Goods Requirement
• Description of the Mark Requirement

 

PRIOR-FILED APPLICATION ADVISORY

 

The filing dates of pending U.S. Application Serial Nos. 90065480 and 87803822 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The identification of goods in International Classes 018, 022, 023, 024, 025, and 026 is indefinite and must be clarified because the nature and purpose of the goods are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  See additional guidance highlighted below.

 

Further, in the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “articles,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Additionally, with respect to International Class 025, the word “clothing” in the identification of goods 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 Class 025 (e.g., Classes 009, 010, and 018), any modification to the identification must identify goods in Class 025 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).  Examples of acceptable identifications for clothing and/or apparel in Class 025 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. 

 

Finally, the identification of goods in Classes 018, 022, 023, 024, 025, and 026 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 services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and 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.

 

The identification of goods in International Class 020 is acceptable as written.

 

Applicant may adopt the following identification in Classes 018, 022, 023, 024, 025, and 026, if accurate (changes highlighted):

 

INTERNATIONAL CLASS 018:  Handbag frames; purse frames; horseshoes; leathercloth; leather and fur, unworked pelts or semi-worked; industrial packaging containers of leather; pouches, namely, {specify goods contemplated in this class, e.g., pouches of textile, pouches of leather, waist pouches, etc.}; umbrellas and their parts; walking sticks; canes; metal parts of canes and walking-sticks; handles for canes and walking sticks; saddlery; backpacks; baggage tags; hiking bags for campers; hiking bags for climbers; bags for sports; bags in the nature of {specify goods contemplated in this class, e.g., evening bags, crossbody bags, etc.}; beach bags; business card cases; notecard cases; clothing for pets; collars for animals; compression cubes adapted for luggage; conference folders in the nature of briefcase-type leather business folders; briefcase-type conference portfolios; covers for animals; wallets being credit card cases; garment bags for travel; handbags; harness for animals; key cases; handbags and pouches made of imitation leather, namely, moleskin; parasols; pocket wallets; purses; Japanese school satchels, (randsels); rucksacks; saddlebags; school bags; school satchels; reusable shopping bags; suitcases; suitcases with wheels; travelling bags; travelling trunks; trunks being luggage; umbrella covers; umbrellas; vanity cases, not fitted; wheeled shopping bags

 

INTERNATIONAL CLASS 022:  Awnings of textile or synthetic materials for use on vessels; tarpaulins for ships; sails; raw textile fibers; cotton waddings for clothes; hammocks; cotton batting for futon bags; cotton batting for futon; knitted cords made of textile fibers; Japanese-style cords (sanada-himo); starched cords made of textile fibers; twisted cords; cordage; netting, not of metal; industrial packaging containers of textile; industrial packaging containers of textile namely straw; elastic bands for binding; tarpaulins, not for ships; outdoor blinds of textile; tents, not for camping; wax ends; mountaineering ropes; tents for mountaineering or camping; sails for windsurfing; sawdust; kapok; wood shavings; wooden excelsior being wood wool; rice hulls for use as textile stuffing; wax waste for use as textile stuffing; cattle hair, raccoon dog hair, pig bristles not for brush-making, and horsehair not for textile use and not for brush-making, all being raw material; feathers and downs; industrial packaging container bags being envelopes and pouches of textile; plastic fibers for textile use; raw fibrous textile; textile fibers

 

INTERNATIONAL CLASS 023:  Threads and yarns; darning thread and yarn; elastic thread and yarn for textile use; embroidery thread and yarn; sewing thread and yarn; spun thread and yarn; thread; threads of plastic materials for textile use; woollen thread and yarn; worsted fabric, thread, and yarn; yarn

 

INTERNATIONAL CLASS 024:  Woven fabrics; oilcloth; gummed waterproof cloth; vinyl-coated cloth textiles for use in the manufacture of {indicate field or goods}; rubberized cloth; textile fabrics for use in filtering; woven textile goods for personal use, namely, {specify goods contemplated in this class, e.g., bath towels, napkins, crib sheets, etc.}; bed sheets; futon quilts; quilt covers for futon; futon ticks, namely, unstuffed futon covers not of paper; blankets, namely, {specify goods contemplated in this class, e.g., lap blankets, pet blankets, picnic blankets, etc.}; dish towels for drying; shower curtains; cloth banners and flags; fitted toilet seat covers of textile; fitted seat covers of textile; curtains; draperies being thick drop curtains; shrouds being sheets for wrapping corpses; shrouds for dressing a corpse for funeral (kyokatabira kimono); red-and-white striped curtains; black-and-white striped curtains; billiard cloth being baize; banners of textile or plastic; bath linen, except clothing; bed blankets; bed linen; bivouac sacks being covers for sleeping bags; bunting of textile or plastic; canvas for tapestry or embroidery; cloth, namely, {specify goods contemplated in this class, e.g., linen cloth, woolen cloth, cotton cloth, etc.}; covers for cushions; crepe fabric; curtains of textile or plastic; damask; diaper changing cloths for babies; door curtains; drugget fabric; fabric for footwear; fabric, namely, {specify goods contemplated in this class, e.g., gauze fabric, cotton fabric, cashmere fabric, etc.}; fabrics for textile use; face towels of textile; felt; textile fabrics being used as filtering material; fitted toilet lid covers of fabric; flags of textile or plastic; flannel fabric; frieze cloth; glass cloths being towels; haircloth being sackcloth; handkerchiefs of textile; textile fabrics being used for hat linings; household linen; jersey fabric; knitted fabric; lingerie fabric; lining fabric for footwear; textile used as lining for clothing; marabout cloth being shrouds; mattress covers; moleskin fabric; mosquito nets; muslin fabric; net curtains; non-woven textile fabrics; picnic blankets; pillow shams; pillowcases; printed calico cloth; quilts; serviettes of textile; bed sheets of textile; shower curtains of textile or plastic; sleeping bag liners; sleeping bags; sleeping bags for babies; table linen, not of paper; table napkins of textile; table runners of textile; table runners, not of paper; tablecloths, not of paper; taffeta cloth; tapestry wall hangings of textile; textile material for {specify goods contemplated in this class, e.g., towels, bed blankets, etc.}; ticking fabric for mattress covers; towels of textile; traced cloth for embroidery; travelling rugs being lap blankets; upholstery fabrics; velvet; wall hangings of textile; woollen cloth; woollen fabric

 

INTERNATIONAL CLASS 025:  Garters; sock suspenders; waistbands; masquerade costumes; special footwear for sports; clothes for sports, namely, {specify goods contemplated in this class, e.g., sports bras, running suits, etc.}; adhesive brassieres; ankle boots; aprons being clothing; ascots; babies' pants being underwear; bandanas being neckerchiefs; bath robes; bath sandals; bath slippers; bathing caps; bathing drawers as clothing; bathing suits; bathing trunks; beach clothes, namely, {specify goods contemplated in this class, e.g., sandals, beach cover-ups, etc.}; beach shoes; belts being clothing; berets; bibs, not of paper; bibs, sleeved, not of paper; boas being necklets; bodices being lingerie; bodies being underclothing; boots for sports; boots; boxer shorts; braces for clothing being suspenders; brassieres; breeches for wear; camisoles; cap peaks; caps being headwear; clothing, namely, {indicate goods contemplated in this class, e.g., leggings, stretch pants, camisoles, etc.} containing slimming substances; clothing for gymnastics, namely, {specify good contemplated in this class, e.g., leotards, tights, etc.}; clothing, namely, {specify goods contemplated in this class, e.g., dresses, evening gowns, scarves, etc.}; coats; collars being clothing; combinations being clothing; corselets; corsets being underclothing; cuffs; cyclists’ clothing, namely, {specify goods contemplated in this class, e.g., bike shorts, etc.}; detachable collars; dress shields; dresses; dressing gowns; ear muffs being clothing; embroidered clothing, namely, {specify goods contemplated in this class, e.g., collars, gloves, scarves, etc.}; fingerless gloves; fishing vests; football boots; football shoes; footmuffs being footwear, not electrically heated; footwear uppers; footwear; gabardines being clothing; straps for boot and leg gaiters; boot and leg gaiters; girdles; gloves being clothing; gymnastic shoes; hairdressing capes; half-boots; hats; headbands being clothing; headscarves; headwear; fitted heel protectors for shoes; heelpieces for footwear; heelpieces for stockings; hoods being clothing; hosiery; inner soles; jackets being clothing; jerseys being clothing; judo uniforms; jumper dresses; jumpers being pullovers; karate uniforms; kimonos; knickers; knitwear being clothing, namely, {specify goods contemplated in this class, e.g., hats, scarves, gloves, etc.}; lace boots; layettes being clothing; leg warmers; leggings being leg warmers; leggings being trousers; leotards; liveries; mittens; money belts being clothing; motorists’ clothing, namely, {specify goods contemplated in this class, e.g., motorcycle jackets, chaps, driving gloves, etc.}; muffs being clothing; neck gaiters; neck scarves being mufflers; neck tube scarves; neckties; outerclothing, namely, {specify goods contemplated in this class, e.g., vests, overcoats, etc.}; overalls; overcoats; pajamas; panties; pants; parkas; petticoats; pockets for clothing; ponchos; pullovers; rash guards; ready-made clothing, namely, {specify goods contemplated in this class, e.g., dresses, cargo pants, shorts, etc.}; ready-made linings being parts of clothing; sandals; saris; sarongs; scarves; shawls; shirts; shoes; short-sleeve shirts; shower caps; ski boots; ski gloves; skirts; skorts; sleep masks; slippers; slips being underclothing; smocks; socks; spats; sports jerseys; sports shoes; stockings; stuff jackets being clothing; suits; suspenders; sweat-absorbent socks; sweat-absorbent stockings; sweat-absorbent underclothing; sweat-absorbent underwear; sweaters; swimsuits; teddies being underclothing; tee-shirts; tights; trouser straps; trousers; turbans; underclothing; underpants; underwear; uniforms; veils being clothing; vests; visors being headwear; waistcoats; waterproof clothing, namely, {specify goods contemplated in this class, e.g., raincoats, rain boots, etc.}; wet suits for water-skiing; wristbands as clothing

 

INTERNATIONAL CLASS 026:  Shuttles for making fishing nets; hosiery loom needles; electric hair curlers, other than hand implements; needles; eyelets for clothing; tapes for haberdashery; haberdashery ribbons; knitted raschel lace for fabrics; embroidery for lace fabrics; semi-finished textile tufts and tassels for decoration; knitting needles; needle-threaders; sewing boxes; dressmakers’ impressing articles, namely, {specify goods contemplated in this class, e.g., sewing needles, marking pins, sewing kits, etc.}; sewing thimbles; pin and needle cushions; boxes for needles; artificial flowers; armbands for holding sleeves; ornamental novelty insignias for wear, not of precious metal; buckles for clothing; ornamental novelty badges for wear, not of precious metal; brooches for clothing; special sash clips for obi (obi-dome); ornamental adhesive patches for jackets; brassards; hair ornaments in the nature of {specify goods contemplated in this class, e.g., hair wraps, combs, hair pins, etc.}; false beards; false moustaches; hair curlers, non-electric, other than hand implements; shoe trimmings, not of precious metal; shoe eyelets; shoe laces; metal fasteners for shoes and boots; human hair; arm bands being clothing accessories; blouse fasteners, namely, {specify goods contemplated in this class, e.g., stud buttons, snap hooks, snap buttons, hook and loop fasteners, etc.}; braids; buttons; cords for trimming, for clothing; cords for trimming; elastic ribbons; embroidery; fancy goods being embroidery; embroidery festoons; frills being lacework for attachment to clothing; frills for attachment to clothing; dressmakers’ articles in the nature of haberdashery, except thread, namely, namely, {specify goods contemplated in this class, e.g., braids, bows ribbons, appliques, lace, embroidery, etc.}; haberdashery bows; haberdashery ribbons; haberdashery, except thread, namely, {specify goods contemplated in this class, e.g., braids, bows ribbons, appliques, lace, embroidery, etc.}; hair bands; hair barrettes; hair slides; hook and pile fastening tapes; lace for edgings; lace trimmings; passementerie; haberdashery ribbons; ribbons and bows, not of paper, for gift wrapping; ribbons for the hair; shoe fasteners; slide fasteners being zippers; snap fasteners; trimmings for clothing; zip fasteners; zip fasteners for bags; zippers; zippers for bags

 

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 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 THE MARK REQUIREMENT

 

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 green square with rounded edges, which is outlined first in white, and again in green; inside the square is a stylized white tree with three large branches, and with a white bucket hanging from the trunk; to the right of the tree are five white horizontal lines of varying lengths, and above the rightmost branch of the tree is the word “TRACY” in stylized white font.

 

RESPONSE GUIDELINES

 

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.

 

HOW TO RESPOND:  Click to file a response to this nonfinal Office action.    

 

EMAIL ADDRESS REQUIREMENT:  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).

 

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 requirements 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. 

 

 

/Hudson, Tamara/

Examining Attorney

Law Office 104

571.272.2575

tamara.hudson@uspto.gov

 

 

PROCEDURAL INFORMATION FOR RESPONSES

 

• 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.