U.S. Application Serial No. 79364602
Mark: CLARKS
| Correspondence Address: Squire Patton Boggs (UK) LLP Premier Place, 2 & A Half Devonshire Square London EC2M 4UJ UNITED KINGDOM |
Applicant: C. & J. Clark International Limited
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1717292
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 https://www.uspto.gov/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 https://tsdr.uspto.gov/, 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.
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the goods and intended consumer as well as its main purpose and intended uses. 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).
The recitation of services highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Applicant must be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §§1402.01, 1402.03(a).
Applicant may adopt the following amended identification of goods and services suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods and services. The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language. Please note proposed changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney:
International Class 009: Downloadable virtual goods, namely, computer programs featuring footwear polish applicators containing footwear polishing preparations, backpacks, bags of all kinds, bags, {delete redundant wording} beach bags, clothing belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headwear, clothing buckles, card holders being wallets, _____ {clarify “cases, cleaning materials for clothing, cleaning materials for headgear,” e.g. credit card cases, key cases, cleaning cloths for clothing and headwear}, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets for clothing, eyewear, _____ {clarify “fasteners,” e.g. zip fasteners, hook and loop fasteners}, footwear accessories, ______ {clarify “footwear cleaning articles,” e.g. footwear cleaning pads}, footwear conditioners, footwear, _______ {clarify “goods made from leather or imitation leather,” e.g. leather and imitation leather clothing}, handbags, headwear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, ______ {clarify “laces,” e.g. footwear laces}, _____ {clarify “leather goods,” e.g. leather handbags}, ______ {clarify “leather preservation,” e.g. leather preserving polishes}, ornaments for footwear, parasols, polish and other cleaning materials for footwear being ______ {clarify goods, e.g. footwear cleaning preparations}, polishes for shoes, preparations for cleaning and polishing footwear, preparations for cleaning footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cleaners being ______ {clarify goods, e.g. shoe brushes}, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, shoe soles, sports bags, sports shoes, cleaning sprays for shoes, suede preserving creams, toiletry bags, trainers being sneakers, travel bags, umbrellas, wallets, watches, wellington boots, and jewelry accessories for use online and in online virtual worlds; downloadable software in the nature of a mobile application for streaming, downloading and viewing content featuring information, articles, commentary, podcasts and virtual experiences in the fields of sports, sporting events, apparel, footwear, sporting goods and equipment, fitness product and accessories, nutrition, health, entertainment and news; downloadable digital image files featuring artwork and ______ {clarify “digital collectibles authenticated by non-fungible tokens (NFTs) in the field of apparel, footwear, handbags, headgear, jewellery and leather goods,” e.g. digital collectibles in the nature of downloadable image files of apparel, footwear, handbags, headwear, jewellery and ______ {clarify “leather goods,” e.g. leather fashion bags} authenticated by non-fungible tokens (NFTs)}; _______ {clarify “downloadable digital files authenticated by non-fungible tokens,” e.g. downloadable digital music files authenticated by non-fungible tokens}; downloadable computer software for the creation, production, modification, storage, sending, receiving, trading and transmission of digital animated and non-animated graphic designs, characters, avatars, ______ {delete or clarify “digital overlays and skins for access and”} for use in online environments, virtual online environments and extended reality virtual environments; ______ {clarify “downloadable computer software for interactive games for use via a global computer network and through various wireless networks and electronic devices for use in online environments, virtual online environments and extended reality virtual environments,” e.g. downloadable interactive computer game software; downloadable virtual reality software for playing interactive computer games}; downloadable software for enabling users to engage in social networking and to interact with online communities; downloadable digital files featuring artwork and digital collectibles authenticated by non-fungible tokens (NFTs) in the field of apparel, footwear, handbags, headgear, jewellery and leather goods {delete duplicative entry}
International Class 035: ______ {clarify “Retail store services relating to virtual goods, digital collectibles, crypto-collectibles and non-fungible tokens on a block chain network featuring applicators containing footwear polishing preparations, backpacks, bags of all kinds, bags, beach bags, belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headgear, buckles, card holders, cases, cleaning materials for clothing, cleaning materials for headgear, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets, eyewear, fasteners, footwear accessories, footwear cleaning articles, footwear conditioners, footwear, goods made from leather or imitation leather, handbags, headgear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, laces, leather goods, leather preservation, ornaments for footwear, parasols, polish and other cleaning materials for footwear, polishes for shoes, preparations for cleaning and polishing footwear, preparations for footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cleaners, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, soles, sports bags, sports shoes, sprays for shoes, suede preservation, toilet bags, trainers, travel bags, umbrellas, wallets, watches, wellington boots and accessories,” e.g. Retail store services featuring virtual goods, namely, polish applicators containing footwear polishing preparations, backpacks, bags of all kinds, beach bags, clothing belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headwear, clothing buckles, card holders being wallets, credit card cases, key cases, cleaning cloths for clothing and headwear, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets for clothing, eyewear, zip fasteners, hook and loop fasteners, footwear accessories, footwear cleaning pads, footwear conditioners, footwear, leather and imitation leather clothing, handbags, headwear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, footwear laces, leather handbags, leather preserving polishes, ornaments for footwear, parasols, polishes for shoes, preparations for cleaning and polishing footwear, preparations for cleaning footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, shoe soles, sports bags, sports shoes, cleaning sprays for shoes, suede preserving creams, sneakers, travel bags, umbrellas, wallets, watches, wellington boots, and jewelry accessories; Retail store services featuring digital and crypto collectibles in the nature of downloadable image files of applicators containing footwear polishing preparations, backpacks, bags of all kinds, bags, beach bags, belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headgear, buckles, card holders, cases, cleaning materials for clothing, cleaning materials for headgear, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets, eyewear, fasteners, footwear accessories, footwear cleaning articles, footwear conditioners, footwear, goods made from leather or imitation leather, handbags, headgear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, laces, leather goods, leather preservation, ornaments for footwear, parasols, polish and other cleaning materials for footwear, polishes for shoes, preparations for cleaning and polishing footwear, preparations for footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cleaners, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, soles, sports bags, sports shoes, sprays for shoes, suede preservation, toilet bags, trainers, travel bags, umbrellas, wallets, watches, wellington boots and accessories}; business management of customer loyalty, incentive and bonus programs; ______ {clarify “online retail services relating to digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments and extended reality virtual environments,” e.g. online retail store services featuring digital animated and non-animated graphic designs, characters and avatars for use in online environments, virtual online environments and extended reality virtual environments}; providing an online marketplace for buyers and sellers of virtual goods, digital collectibles, and crypto-collectibles and of goods authenticated by non-fungible tokens; operating an online marketplace for buyers and sellers of virtual goods, digital collectibles, and crypto-collectibles and of goods authenticated by non-fungible tokens
International Class 041: Entertainment services, namely, providing on-line, non-downloadable virtual footwear polish applicators containing footwear polishing preparations, backpacks, bags of all kinds, bags, {delete redundant wording} beach bags, clothing belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headwear, clothing buckles, card holders being wallets, _____ {clarify “cases, cleaning materials for clothing, cleaning materials for headgear,” e.g. credit card cases, key cases, cleaning cloths for clothing and headwear}, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets for clothing, eyewear, _____ {clarify “fasteners,” e.g. zip fasteners, hook and loop fasteners}, footwear accessories, ______ {clarify “footwear cleaning articles,” e.g. footwear cleaning pads}, footwear conditioners, footwear, _______ {clarify “goods made from leather or imitation leather,” e.g. leather and imitation leather clothing}, handbags, headwear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, ______ {clarify “laces,” e.g. footwear laces}, _____ {clarify “leather goods,” e.g. leather handbags}, ______ {clarify “leather preservation,” e.g. leather preserving polishes}, ornaments for footwear, parasols, polish and other cleaning materials for footwear being ______ {clarify goods, e.g. footwear cleaning preparations}, polishes for shoes, preparations for cleaning and polishing footwear, preparations for cleaning footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cleaners being ______ {clarify goods, e.g. shoe brushes}, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, shoe soles, sports bags, sports shoes, cleaning sprays for shoes, suede preserving creams, toiletry bags, trainers being sneakers, travel bags, umbrellas, wallets, watches, wellington boots, and jewelry accessories for use in virtual environments created for entertainment purposes; ______ {clarify “providing via website information, namely, articles, commentary, streaming and viewing content, podcasts, and virtual experiences in the fields of sports, sporting events, apparel, footwear, sporting goods and equipment, fitness product and accessories, nutrition, health, entertainment and news,” e.g. providing a website featuring non-downloadable articles in the field of sports, sporting events, apparel, footwear, sporting goods and equipment, fitness products and accessories, nutrition, health, entertainment news and current event news; entertainment services, namely, providing online non-downloadable podcasts in the field of sports, sporting events, apparel, footwear, sporting goods and equipment, fitness products and accessories, nutrition, health, entertainment news and current event news}; entertainment services, namely, ______ {clarify “providing digital animated and non-animated designs and characters, avatars, shops, digital overlays and skins for use in virtual environments,” e.g. providing on-line, non-downloadable virtual animated and non-animated characters and avatars for use in virtual environments created for entertainment purposes}; virtual reality and interactive game services provided online from a global computer network and through various wireless networks and electronic devices; entertainment services, namely, providing online video games; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes; entertainment services, namely, ______ {clarify “providing an online environment featuring streaming of entertainment content and live streaming of entertainment events” to indicate services in Class 41}; entertainment services in the nature of organizing, arranging and hosting virtual entertainment in the nature of ______ {clarify services, e.g. virtual art exhibitions, virtual electronic game competitions} and customer events and performances in the nature of ______ {clarify services, e.g. virtual contests, virtual musical theater performances}; providing virtual reality game services via a website
International Class 042: Hosting of websites that gives computer users the ability to upload and share user-generated videos, essays and articles on a wide variety of topics and subjects; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking regarding fashion, entertainment, sneakers, popular culture and sports; hosting of websites that gives users the ability to review various print, photographic, and graphic images, and to review audio and video content and to utilize a custom template to provide input, likes, dislikes, edits, changes, modifications, opinions, suggestions, and comments and to engage in social, business and community networking; providing temporary use of online non-downloadable mobile application for connecting users with information, news and commentary in the fields of fashion, entertainment, sneakers, popular culture and sports; providing temporary use of online non-downloadable computer software for the creation, production, modification, storage, sending, receiving, trading and transmission of interactive audiovisual media, data, visual effects, digital image files, digital collectibles being image files, crypto-collectibles being image files and image files authenticated by non-fungible tokens on a blockchain network, all featuring virtual footwear polish applicators containing footwear polishing preparations, backpacks, bags of all kinds, bags, {delete redundant wording} beach bags, clothing belts, boots, briefcases, brushes for clothing, brushes for footwear, brushes for headwear, clothing buckles, card holders being wallets, _____ {clarify “cases, cleaning materials for clothing, cleaning materials for headgear,” e.g. credit card cases, key cases, cleaning cloths for clothing and headwear}, clothing accessories, clothing, creams and waxes for shoes, detergent compositions and pastes for shoe cleaning, eyelets for clothing, eyewear, _____ {clarify “fasteners,” e.g. zip fasteners, hook and loop fasteners}, footwear accessories, ______ {clarify “footwear cleaning articles,” e.g. footwear cleaning pads}, footwear conditioners, footwear, _______ {clarify “goods made from leather or imitation leather,” e.g. leather and imitation leather clothing}, handbags, headwear accessories, headwear, heel pads, heel protectors, heel tips, heels, holdalls, hooks for footwear, imitation jewellery, impregnated sponges for footwear cleaning, inner socks, instruments for measuring feet, instruments for measuring heel tips, jewellery, key cases, ______ {clarify “laces,” e.g. footwear laces}, _____ {clarify “leather goods,” e.g. leather handbags}, ______ {clarify “leather preservation,” e.g. leather preserving polishes}, ornaments for footwear, parasols, polish and other cleaning materials for footwear being ______ {clarify goods, e.g. footwear cleaning preparations}, polishes for shoes, preparations for cleaning and polishing footwear, preparations for cleaning footwear, preparations for pressing and polishing leather, preparations for pressing and polishing suede, purses, replacement parts and fittings for footwear, replacement parts and fittings for shoes, sandals, satchels, school bags, shoe brushes, shoe cleaners being ______ {clarify goods, e.g. shoe brushes}, shoe cloths, shoe horns, shoe insoles, shoe laces, shoe linings of leather, shoe polishers, shoe scrapers, shoe stretchers, shoe trees, shoes, shoulder bags, slippers, soles for footwear, shoe soles, sports bags, sports shoes, cleaning sprays for shoes, suede preserving creams, toiletry bags, trainers being sneakers, travel bags, umbrellas, wallets, watches, wellington boots, and jewelry accessories for use in virtual environments; providing non-downloadable computer software for the creation, production, modification, storage, sending, receiving, trading and transmission of digital animated and non-animated graphic designs, characters, avatars, _____ {delete or clarify “digital overlays and skins for access and} for use in online environments, virtual online environments and extended reality virtual environments; _____ {clarify “providing non-downloadable computer software for interactive games for use via a global computer network and through various wireless networks and electronic devices for use in online environments, virtual online environments and extended reality virtual environments,” e.g. providing temporary use of online non-downloadable software for playing interactive games; providing temporary use of non-downloadable virtual reality game software via a website}; providing temporary use of online non-downloadable software for enabling users to engage in social networking and to interact with online communities; providing temporary use of online non-downloadable software for accessing and streaming multimedia entertainment content; providing temporary use of online non-downloadable software for providing access to an online virtual environment; providing temporary use of online non-downloadable software ______ {specify the function of the programs, e.g. for use in database management, for use as a spreadsheet, for word processing, and, if software is content- or field-specific, the field of use}; hosting a website, which provides internet users with the option to featuring technology that enables users to purchase and sell virtual goods, digital collectibles, crypto-collectibles and goods authenticated by non-fungible tokens through cryptocurrency-based transactions; ______ {clarify “providing platform as a service for display of interactive media, data, audio and visual content, visual effects, digital files, digital collectibles, crypto-collectibles and messages”}
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
EMAIL ADDRESS REQUIREMENT
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); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. COUNSEL REQUIREMENT
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as outside of the United States or its territories. For more information, see the U.S. Counsel webpage at https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. 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); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
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.