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: 1/7/2012

 

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, 2.65(a); TMEP §§711, 718.03.

 

 

Office Records Search-Potential Section 2(d) Refusal for Likelihood of Confusion

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that potentially conflicting marks in prior-filed pending applications may present a bar to registration.

 

Information regarding pending Application Serial Nos. 85262056, 85353259, and 85417933 is enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

However, applicant must address the following requirement.

 

Identification of Goods Indefinite

 

Applicant submitted the following identification with the application:

 

airsoft guns for recreational purposes; ammunition for airsoft guns; holsters for airsoft guns; airsoft targets; protection equipment for use when participating in airsoft recreational activities, namely, full-face shields, body armor, safety lenses, and safety goggles; remote control airsoft toys; clothing and tactical vests for use when participating in airsoft recreational activities

 

The above bolded wording in the identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.   TMEP §§1402.01 and 1402.03(a).  

 

Specifically, while airsoft guns for recreational purposes are properly classified in International Class 28, airsoft guns not for recreational use are classified in International Class 13.  As such, ammunition and holsters designed for use with airsoft guns may be classified in either International Class 13 or International Class 28, depending on their intended use.  Applicant must add “for recreational purposes” to the end of each listing if applicant wishes to limit the goods to International Class 28.

 

Protective clothing and equipment is properly classified in International Class 9.  Additionally, applicant must specify the type of clothing offered, e.g. protective padded clothing for protection against bodily harm and blunt force trauma.  If applicant’s clothing is not intended to protect the wearer from harm or injury, the clothing items would be classified in International Class 25, and applicant would need to specify the particular type of clothing provided, i.e. shirts, pants, jackets, etc.

 

Applicant must also further specify the common name of the remote control toys, such as cars, planes, boats, robots, etc.

 

Applicant may adopt the following identification of goods, if accurate: 

 

International Class 9

 

Protection equipment for use when participating in airsoft recreational activities, namely, full-face shields, body armor, safety lenses, and safety goggles; protective padded clothing and tactical vests for protection against bodily harm and blunt force trauma for use when participating in airsoft recreational activities

 

International Class 13

 

Ammunition for airsoft guns not for recreational purposes; holsters for airsoft guns not for recreational purposes

 

International Class 25

 

Clothing, namely, [Specify the type, e.g. shirts, pants, hats, caps, jackets] for use when participating in airsoft recreational activities

 

International Class 28

 

Airsoft guns for recreational purposes; ammunition for airsoft guns for recreational purposes; holsters for airsoft guns for recreational purposes; airsoft targets; remote control airsoft toys, namely, [Specify type, e.g. cars, planes, boats, robots]

 

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.

 

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.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS BY INTERNATIONAL CLASS:  Applicant must list the goods by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods not covered by the fees already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

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).

 

Note:  Applicant has paid for one (1) class.

 

Comments

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Nicholas A. Coleman/

United States Patent and Trademark Office

Law Office 115

Phone: (571) 272-4917

Email: nicholas.coleman@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 1/7/2012 FOR

SERIAL NO. 85422972

 

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 1/7/2012 (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.