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: 3/13/2012

 

 

 

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 Advisory

 

Note:  This is merely an advisory paragraph and not a requirement.

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

PARTIAL Identification of Goods and/or Services Amendment Requirement

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

The “Men's and women's jewelry, namely, . . . , belt buckles” goods are classified incorrectly.  Applicant must amend the application to classify the goods and/or services in International Class 26, or delete them.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).  Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).  Please see suggestions below.

The wording “Men's and women's jewelry, namely, . . . , dog-tags”, “Men's and Women's clothing, namely, . . . , cutoffs shirts” and “Sports uniforms, namely, . . . , cleats” in the identification of goods and/or services is indefinite and must be clarified because the nature of the goods is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please see suggestions below.

 

The current identification reads as follows:

 

            International Class 14: Men's and women's jewelry, namely, pins, rings, necklaces, pendants, dog-tags, belt buckles and watches

            International Class 25: Men's and Women's clothing, namely, tee shirts, polo shirts, sweat shirts, cutoffs shirts, tank tops, hooded sweatshirts, sweater shirts, jeans, jean shorts, jean skirts, sport coats, slacks, skirts, ties, scarves, belts, socks, athletic socks, dress socks, underwear, undergarments, pocket squares, tuxedos, tuxedo shirts, vests, cummerbunds, coats, and wind resistant jackets; Athletic wear, namely, workout tee shirts, tank tops, compression shirts, compression sleeveless tee shirts, compression shorts, workout pants and shorts, long sleeve hooded thin fabric shirts, workout suits, warm-up suits tops and pants; Yoga wear, namely, tops, women's sports bras, sleeveless bra tops, shorts and pants; Sports uniforms, namely, shirts, jerseys, pants, shorts, undergarments, socks, cleats, shoes, belts and hats; Shoes, namely, athletic shoes, casual shoes and dress shoes; Men's dress suits; Women's dress suits; Gloves, scarves, walking shorts, cargo shorts, spandex shorts, spandex pants, khakis, pants, dress slacks, baseball caps, beanies, dress hats and decorated hats

 

The following wording in the current identification is acceptable, because it is sufficiently definite and properly classified:

 

            International Class 14: Men's and women's jewelry, namely, pins, rings, necklaces, pendants, . . . , . . . and watches

            International Class 25: Men's and Women's clothing, namely, tee shirts, polo shirts, sweat shirts, . . . , tank tops, hooded sweatshirts, sweater shirts, jeans, jean shorts, jean skirts, sport coats, slacks, skirts, ties, scarves, belts, socks, athletic socks, dress socks, underwear, undergarments, pocket squares, tuxedos, tuxedo shirts, vests, cummerbunds, coats, and wind resistant jackets; Athletic wear, namely, workout tee shirts, tank tops, compression shirts, compression sleeveless tee shirts, compression shorts, workout pants and shorts, long sleeve hooded thin fabric shirts, workout suits, warm-up suits tops and pants; Yoga wear, namely, tops, women's sports bras, sleeveless bra tops, shorts and pants; Sports uniforms, namely, shirts, jerseys, pants, shorts, undergarments, socks, . . . , shoes, belts and hats; Shoes, namely, athletic shoes, casual shoes and dress shoes; Men's dress suits; Women's dress suits; Gloves, scarves, walking shorts, cargo shorts, spandex shorts, spandex pants, khakis, pants, dress slacks, baseball caps, beanies, dress hats and decorated hats

 

Applicant may adopt the following identification of goods and/or services, if accurate (PLEASE SUBMIT YOUR AMENDED IDENTIFICATION IN STANDARD FONT; THE FONT STYLIZATION BELOW IS JUST TO EMPHASIZE THE RECOMMENDED CHANGES):

 

            International Class 14: Men's and women's jewelry, namely, pins, rings, necklaces, pendants, dog-tags for decorative purposes, belt buckles and watches

            International Class 25: Men's and Women's clothing, namely, tee shirts, polo shirts, sweat shirts, cutoff cutoffs shirts, tank tops, hooded sweatshirts, sweater shirts, jeans, jean shorts, jean skirts, sport coats, slacks, skirts, ties, scarves, belts, socks, athletic socks, dress socks, underwear, undergarments, pocket squares, tuxedos, tuxedo shirts, vests, cummerbunds, coats, and wind resistant jackets; Athletic wear, namely, workout tee shirts, tank tops, compression shirts, compression sleeveless tee shirts, compression shorts, workout pants and shorts, long sleeve hooded thin fabric shirts, workout suits, warm-up suits tops and pants; Yoga wear, namely, tops, women's sports bras, sleeveless bra tops, shorts and pants; Sports uniforms, namely, shirts, jerseys, pants, shorts, undergarments, socks, {insert purpose of cleats, e.g., “golf” and/or “soccer”} cleats, shoes, belts and hats; Shoes, namely, athletic shoes, casual shoes and dress shoes; Men's dress suits; Women's dress suits; Gloves, scarves, walking shorts, cargo shorts, spandex shorts, spandex pants, khakis, pants, dress slacks, baseball caps, beanies, dress hats and decorated hats

            International Class 26: belt buckles

 

See TMEP §1402.01.

 

            Amendment Guidelines

 

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.

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 use in commerce:

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

(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.gov.uspto.report/trademarks/tm_fee_info.jsp).

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

(a)        DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

(b)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

(c)        STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

(d)        VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class(es) 14 and 25 only.  Applicant must submit additional specimens if different international classes are added to the application.

The filing fees for adding classes to an application are as follows:

(1)  $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or

(2)  $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

(1)        Deleting the goods and/or services to which the refusal pertains;

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

(3)        Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).

If applicant does not respond to this requirement within the six-month period for response, the following goods and/or services will be deleted from the application:  “Men's and women's jewelry, namely, . . . , dog-tags, belt buckles”, “Men's and Women's clothing, namely, . . . , cutoffs shirts” and “Sports uniforms, namely, . . . , cleats”.  The application will then proceed with the following goods and/or services only:

            International Class 14: Men's and women's jewelry, namely, pins, rings, necklaces, pendants, . . . , . . . and watches

            International Class 25: Men's and Women's clothing, namely, tee shirts, polo shirts, sweat shirts, . . . , tank tops, hooded sweatshirts, sweater shirts, jeans, jean shorts, jean skirts, sport coats, slacks, skirts, ties, scarves, belts, socks, athletic socks, dress socks, underwear, undergarments, pocket squares, tuxedos, tuxedo shirts, vests, cummerbunds, coats, and wind resistant jackets; Athletic wear, namely, workout tee shirts, tank tops, compression shirts, compression sleeveless tee shirts, compression shorts, workout pants and shorts, long sleeve hooded thin fabric shirts, workout suits, warm-up suits tops and pants; Yoga wear, namely, tops, women's sports bras, sleeveless bra tops, shorts and pants; Sports uniforms, namely, shirts, jerseys, pants, shorts, undergarments, socks, . . . , shoes, belts and hats; Shoes, namely, athletic shoes, casual shoes and dress shoes; Men's dress suits; Women's dress suits; Gloves, scarves, walking shorts, cargo shorts, spandex shorts, spandex pants, khakis, pants, dress slacks, baseball caps, beanies, dress hats and decorated hats

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issue(s) raised in this Office action if applicant wants to keep two of the above classes of goods, or answer any questions.

 

Alternatively, applicant may expedite prosecution of this application by filing 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.

 

Tina H. Mai

/Tina H. Mai/

Trademark Examining Attorney

Law Office 108

571-272-4110

tina.mai@uspto.gov (not for formal responses)

 

 

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 TRADEMARK APPLICATION

Your trademark application (Serial No. 85477367) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 3/13/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

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

 

2. Respond within 6 months, calculated from 3/13/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

Tina H. Mai

/Tina H. Mai/

Trademark Examining Attorney

Law Office 108

571-272-4110

tina.mai@uspto.gov (not for formal responses)

 

WARNING

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

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, please use the Trademark Electronic Application System Response to Office Action form.