UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/6/2011

 

THIS IS A FINAL ACTION.

 

 

FINAL REFUSAL

 

This letter responds to the applicant’s 6/6/2011 communication.

 

By previous Office Action, the examining attorney made the requirement of an acceptable identification of goods and the appropriate fee therefor.  (The applicant has provided an acceptable signature/declaration.)

The examining attorney has carefully considered the applicant’s response but has found the same to be unpersuasive.  For the reasons provided below, the requirements of an acceptable identification of goods and the appropriate fee therefor are continued and made final.

 

1.         Identification of goods.

The applicant’s identification of goods, as amended, remains unacceptable because it is indefinite, is overbroad, and impermissibly uses proprietary wording.  TMEP §1402.01.

 

The wording “hoodies” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No. 2424471 (Appendix below).  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  Therefore, applicant must amend the identification of goods by deleting the wording “hoodies” and substituting the common commercial or generic name for the goods. 

The examining attorney may withdraw the refusal to register based on the applicant’s identification if the applicant amends the same as follows:

Class 9—protective clothing, namely, chest protectors and jackets; and protective headgear, namely, neck braces

Class 25—clothing, namely, t-shirts, hooded sweatshirts, jackets, caps, and shirts, footwear and headwear

Class 24—hooded towels

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

2.         Fee.

If applicant prosecutes this application as a more-than-two–, rather than as a two-, class application, then applicant must comply with each of the requirements below for those goods and/or services based on either an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both::

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The requirements of an acceptable identification of goods and the appropriate fee therefor are continued and made final.

 

•           Responding to this Office Action.

If applicant does not respond within six months of the date of issuance of this final Office Action, the application will be abandoned (as to all goods/service unless otherwise indicated above).  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

To expedite prosecution of the application, applicant is encouraged to file its response to this Office Action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS Response to Office Action (ROA) form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov and/or call the Trademark Assistance Center at 1-800-786-9199.

Unless applicant filed its application with TEAS-Plus status and wishes to avoid incurring a $50-per-class fee (in which case, see immediately preceding paragraph), there is no required format or form for responding to an Office Action.  However, the Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html. 

If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office Action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

If applicant does not respond to this Office Action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office Action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

The response must be signed by the individual applicant or by a person with legal authority to bind a juristic applicant (e.g., a corporate officer, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner).  See TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all should sign.  TMEP §611.06(a).  The proper signatory must personally sign or manually enter his/her electronic signature.  TMEP §§611.01(b), 611.02.

 

/J. Brendan Regan/

Examining Attorney

U.S. Patent and Trademark Office

Law Office 113

brendan.regan@uspto.gov

571/272.9212

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

                                                    APPENDIX TO OFFICE ACTION

     

Mark
        HOODIES
Goods and Services
        IC 025. US 022 039. G & S: men's, women's and children's clothing, namely, sweatshirts,, shirts, jeans, jackets, coats, sweatpants, hooded sweatshirts, slacks, suits, hats, headbands, visors, caps, dresses, shoes, sneakers, boots, wristbands, socks, T-shirts, belts, undergarments, neckties, dress shirts, rugby shirts, knit shirts, shorts, and sandals. FIRST USE: 19930920. FIRST USE IN COMMERCE: 19940101
Mark Drawing Code
        (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS [stylization omitted here]
Design Code
        26.11.13 - Rectangles (exactly two rectangles); Two rectangles
        26.11.21 - Rectangles that are completely or partially shaded
        26.17.13 - Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or letters; Underlined words or letters
Serial Number
        75596259
Filing Date
        November 27, 1998
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        November 7, 2000
Registration Number
        2424471
Registration Date
        January 30, 2001
Owner Name and Address
        (REGISTRANT) WALTERS, ERNEST III, DBA EW3 INDIVIDUAL UNITED STATES POB 4069 NEW ORLEANS LOUISIANA 70178
Assignment Recorded
        ASSIGNMENT RECORDED
Prior Registration(s)
        2204680
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Affidavit Text
        SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20110330.
Renewal
        1ST RENEWAL 20110330
Live Dead Indicator
        LIVE

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 7/6/2011 FOR

SERIAL NO. 85135308

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 7/6/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.