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: 3/7/2012

 

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.

 

Search Results: 

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Informal Issues:

 

Identification of Goods and Services – Clarification Required:

 

The wording “key chains” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  The goods “key chains” can be in various classes based on material composition.  For example, “metal key chains” are in International Class 06, while “leather key chains” are in International Class 18.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant has classified “equipment bags designed for baseball and softball equipment” in International Class 18; however, the proper classification is International Class 28.  Therefore, applicant must either (1) reclassify these goods in the proper international class, or (2) delete the wording from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. 

 

The wording “clothing” in the identification of goods must be clarified because it is too broad and could include goods in several international classes.  See TMEP §§1402.01, 1402.03.  Examples of acceptable identifications include the following:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts, shorts and pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s clothing is classified in International Class 25, applicant should insert the word “namely,” after “clothing” and indicate the specific types of clothing items (e.g., shirts, pants, coats, dresses).

 

The wording “sporting goods; equipment used in the field of sports and recreation; protective equipment used in the field of sports and recreation; clothing for sports and recreation; toys” in the International Class 28 identification of goods is indefinite and must be clarified.  See 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 product and intended consumer as well as its main purpose and intended uses. 

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 06:          “Metal key chains” and/or

 

Class 09:          NO CHANGES REQUIRED and/or

 

Class 14:          “Key chains of precious metal”

 

Class 16:          NO CHANGES REQUIRED and/or

 

Class 18:          “Tote bags; back packs; athletic equipment bags designed for baseball and softball equipment; Leather key chains” and/or

 

Class 25:          “Clothing, namely, [specify goods by common commercial name, e.g., shirts, pants]; footwear, headwear, infantwear, uniforms, wrist bands ” and/or

 

Class 28:          “sporting goods, namely, [specify goods by common commercial name, e.g., baseball bats]; equipment used in the field of sports and recreation, namely, [specify goods by common commercial name, e.g., baseballs]; protective equipment used in the field of sports and recreation, namely, [specify goods by common commercial name, e.g., athletic supporters]; clothing for sports and recreation, namely, [specify goods by common commercial name, e.g., baseball gloves]; baseball and softball gloves; baseball and softball mitts; batting gloves; toys, namely, [specify goods by common commercial name, e.g., children’s multiple activity toys]; stuffed toys; batting tees; pitching machines; pitching screens; [moved from Class 18] athletic equipment bags designed for baseball and softball equipment”

 

Identifications of goods can be amended only to clarify or limit the goods and/or 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.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services 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.

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 06, 09, 14, 16, 18, 21, 25 and 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

Requirements for Combined Application - Advisory:

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)     Applicant must list the goods by international class; and

 

(2)     Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Responding to This Office Action:

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.

 

 

/Dominic Fathy/

Trademark Examining Attorney

Law Office 104

571-272-8801 (phone)

571-273-8801 (fax)

dominic.fathy@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 3/7/2012 FOR

SERIAL NO. 85471401

 

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 3/7/2012 (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.