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: 5/1/2011

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on April 29, 2011.

 

The signature requirement has been satisfied.  TMEP §§713.02, 714.04.

 

The identification requirement is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

 

 

Requirement - Identification

All identifications must be precise and identify the goods with particularity using common or commercial names for the goods.  TMEP §1402.01.  This requirement is now made FINAL. 

            Current Identification

 

Applicant’s amended identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):

 

International Class 025:  clothing, namely, athletic footwear, athletic shirts, athletic shorts, athletic uniforms, athletic warm ups suits, baseball caps and hats, beanies, compression garments for athletic or other non-medical use, namely, compression shorts and compression shirts, dri fit long and short sleeve shirts, fleece pullovers, footwear for sports, wrestling shoes, golf shirts, gym shorts, head sweatbands, hooded sweatshirts, jerseys, jogging suits, long-sleeved shirts, mma shorts, moisture-wicking sports shirts, moisture-wicking sports shorts, polo shirts, pullovers, short-sleeved shirts, short-sleeved or long-sleeved t-shirts, wrestling singlets, skull caps, socks, sport shirts, sweat pants, sweat shirts, visors, warm-up suits.

 

 

 

The identification is unacceptable as presently worded because certain goods are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Applicant’s use of punctuation in the identification may be a source of confusion.  Applicant should note the punctuation conventions used by the Office.  Particular items or services are generally offset by semicolons, and commas are used to indicate goods or services with a particular feature in a list after describing the shared feature (i.e., articles of clothing, namely, t-shirts, pants, skirts). 

The wording “DRI FIT” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 1887959, 1794058, and 2571314.  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 “DRI FIT” and substituting the common commercial or generic name for the goods. 

 

 

            Suggested Amendments

 

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {}):  

 

International Class 025:  clothing, namely, athletic footwear; athletic shirts; athletic shorts; athletic uniforms; athletic warm ups suits; baseball caps and hats; beanies, compression garments for athletic or other non-medical use, namely, compression shorts and compression shirts; moisture-wicking long and short sleeve shirts; fleece pullovers; footwear for sports; wrestling shoes; golf shirts; gym shorts; head sweatbands; hooded sweatshirts; jerseys; jogging suits; long-sleeved shirts; mma shorts; moisture-wicking sports shirts; moisture-wicking sports shorts; polo shirts; pullovers; short-sleeved shirts; short-sleeved or long-sleeved t-shirts; wrestling singlets; skull caps; socks; sport shirts; sweat pants; sweat shirts; visors; warm-up suits.

 

 

            Limitation on Amendments

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

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.

 

The requirement for a definite identification of goods is now made FINAL. 

 

Response Guidelines

 

 

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.  Applicant is encouraged to contact the examining attorney via email or telephone to expedite the processing of this application through an examiner’s amendment.

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  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).

 

 

 

 

/Andrea R. Hack/

Andrea R. Hack

Trademark Examining Attorney

Law Office 108

Ph: 571.272.5413

Fax: 571.273.5413

Andrea.Hack@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 5/1/2011 FOR

SERIAL NO. 85221920

 

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 5/1/2011 (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.