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: 8/22/2011

 

THIS IS A FINAL ACTION.

 

This letter responds to applicant’s communication filed July 20, 2011.  The claim of ownership for three prior registrations is noted.  Further, the specimen is acceptable for class 25 goods.  However, the amendment to the identification of goods has been rejected.  Therefore, this action constitutes a FINAL refusal.

 

Identification of Goods

 

The application identifies goods that are classified in more than 2 classes; however, the fees submitted are sufficient for only two classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for the additional class(es). 

 

 

 

The examining attorney may require an amendment of the identification language to accurately describe the goods.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979).  For assistance with identifying and classifying goods 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. 

 

The proposed amendment to the identification cannot be accepted because it refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a). 

 

The amendment identifies the following goods:  “antimicrobial and combined ordor absorbtion and antimicrobial treatments.”  This wording is beyond the scope of the original wording which restricted the components to only “odor absorbing compounds”.

 

Identifications can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording should be deleted from the identification.  Applicant must amend certain wording as indicated below.  See TMEP §1402.01.

 

“Odor absorbtion, antimicrobial and combined ordor absorbtion and antimicrobial [wording “antimicrobial and combined ordor absorbtion and antimicrobial” beyond scope as noted above] treatments [term “treatments” do not identify physical goods—specify, e.g., coatings] sold as an integral component of textiles and fabrics, namely, wovens and non-woven textiles and fabrics sold in bulk and stock form [wording “wovens and non-woven textiles and fabrics sold in bulk and stock form” is indefinite—“textiles” and “fabrics” must be specified according to ID Manual]; odor absorbtion, antimicrobial and combined ordor absorbtion and antimicrobial treatments [wording “antimicrobial and combined ordor absorbtion and antimicrobial treatments” unacceptable] sold as an integral component of newly manufactured semi-finished and finished goods and articles of manufacture made with cloth, fabrics and textiles, namely, namely, upholstery [specify further, e.g., fabrics], linens [term too broad—see ID Manual], bedding [term too broad—see ID Manual], carpeting [class 27 goods], curtains, draperies, [specify, e.g., fabric] valances, handbags [class 18 goods], fabric table runners, fabric place mats, shams, pillow cases, window treatments [wording “window treatments” must be specified according to ID Manual] made of cloth, fabric and textile, [specify, e.g., window] blinds [‘blinds” class 20 goods] made of cloth, fabric and textile, pillow shams, comfortors [comforters], [specify type, e.g., bed] blankets, cushions [class 20 goods], and rugs [class 27 goods]”

 

Odor absorbtion, antimicrobial and combined ordor absorbtion and antimicrobial treatments [wording “antimicrobial and combined ordor absorbtion and antimicrobial” beyond scope as noted above] sold as an integral component of clothing and footwear made of fabrics and textiles, namely, athletic footwear, athletic shoes, casual footwear, casual shoes, bathing suits, swimwear, beach coverups, beachwear, bikinis, blazers, sportscoats [sport coats], outerwear [term too broad], jackets, coats, blouses, shirts, sportshirts [sport shirts], dress shirts, tee shirts, sweatshirts, sweat pants, gym shorts, halter tops, bodysuits [body suits], boxer shorts, shorts, baseball caps, caps[,] clothing [term “clothing” too broad], hats, overalls, coverups, dresses, skirts, gym shorts [repeated goods], head wear, jeans, pants, slacks, lingerie, pajamas, panties, underwear, undershirt, hunting apparel [wording “hunting apparel” is too broad], athletic apparel [wording “athletic apparel” is too broad], socks, sweaters, swimsuits, tank tops, tights, vests, dress suits, rainwear, raincoats, sports [specify, over] uniforms, sportswear [term “sportswear”], casual wear, cruise wear [unacceptable], gloves, mittens, scarves, thermal underwear and fishing apparel [term “apparel” is too broad]” in International Class 25.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Final Options

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

Christopher.Buongiorno@uspto.gov

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 8/22/2011 FOR

SERIAL NO. 85149061

 

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 8/22/2011 (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.