UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY 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: 6/1/2014

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

ISSUES APPLICANT MUST ADDRESS:  On May 12, 2014, the trademark examining attorney and Anna Jacobsen discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES – CLASSES 18 & 25

The goods and services, as amended in applicant’s October 7, 2013, response, are:

Class 14:         JEWELRY; WATCHES; CUFF LINKS AND TIE CLIPS

Class 18:         Bags, namely, tote bags, duffel bags, messenger bags, satchels, travel kits, brief cases, luggage, wallets, valises, garment bags for travel, key cases, attaché cases, billfolds, backpacks, umbrellas and card cases

Class 25:         Clothing, namely shirts; tops; sweaters; cardigans; shorts; dress pants; pants; overalls; sweatshirts; boxer shorts; undershirts; clothing of leather; t-shirts; jerseys; neckties; trousers; vests; suits; blazers; tuxedos; waistcoats; jeans; socks; belts; scarves; hats; caps; bandannas; berets; ear muffs; sport jackets; outerwear; coats; rain coats; jackets; parkas; slickers; raincoats; jumpsuits; swimwear; gloves; mittens; bow ties; mufflers; footwear; shoes; sneakers; sport shoes; sandals; athletic shoes; and boots

Class 35:         RETAIL STORE SERVICES FEATURING CLOTHING, FOOTWEAR, BAGS, LUGGAGE, SUNGLASSES, JEWELRY, WATCHES, EYEWEAR, PERSONAL ACCESSORIES, AND FASHION ACCESSORIES

The applicant’s amendments to identifications of goods in Class 14 and services in Class 35 are sufficiently definite and properly classified. However, some of the wording in the identification of goods in Class 18 and Class 25 is indefinite or too broad and must be clarified for the reasons specified below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

Class 18

The proposed amended identification of goods in Class 18 is:

Bags, namely, tote bags, duffel bags, messenger bags, satchels, travel kits, brief cases, luggage, wallets, valises, garment bags for travel, key cases, attaché cases, billfolds, backpacks, umbrellas and card cases

The wording and the use of punctuation to describe goods in Class 18 is indefinite; as currently written, the identification describes all the goods as a type of bag, including goods that are not bags, i.e., “bags, namely, … wallets, billfolds, umbrellas,” etc.

Proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id.

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application. Specifically, the proposed amendment to the identification of goods in Class 18 is not acceptable in its entirety, because the proposed amendment refers to “wallets, key cases, billfolds, umbrellas and card cases.” Although these goods would be within the scope of the “personal accessories” included in the original application, the proposed amendment deletes that wording; therefore, the additional items 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); TMEP §§1402.06 et seq., 1402.07.  The original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

An acceptable identification of goods and/or services is required in a U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01. An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a). In this case, amending to restore the wording “personal accessories” to the identification and including the aforementioned items in the category of personal accessories would bring those items within the scope of the original wording. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

Class 25

The proposed amended identification of goods in Class 25 includes the terms “Clothing of leather” and “Outerwear.” This wording is indefinite and must be clarified to specify the types of leather clothing, e.g., belts, hats, jackets, skirts, vests, and the types of outerwear, e.g., coats, raincoats, jackets, etc.

Applicant may adopt the following identification, if accurate:

Class 14:         Jewelry; watches; cuff links and tie clips

Class 18:         Bags, namely, tote bags, duffel bags, messenger bags, satchels, travel kits, brief cases; luggage; valises; garment bags for travel; attaché cases; backpacks; personal accessories, namely, wallets, key cases, billfolds, umbrellas, and card cases

Class 25:         Clothing, namely shirts; tops; sweaters; cardigans; shorts; dress pants; pants; overalls; sweatshirts; boxer shorts; undershirts; clothing of leather, namely _____ {specify types of leather clothing, e.g., belts, hats, jackets, skirts, vests}; t-shirts; jerseys; neckties; trousers; vests; suits; blazers; tuxedos; waistcoats; jeans; socks; belts; scarves; hats; caps; bandannas; berets; ear muffs; sport jackets; outerwear, namely, coats, rain coats, jackets, parkas, slickers, raincoats; jumpsuits; swimwear; gloves; mittens; bow ties; mufflers; footwear; shoes; sneakers; sport shoes; sandals; athletic shoes; AND boots

Class 35:         Retail store services featuring clothing, footwear, bags, luggage, sunglasses, jewelry, watches, eyewear, personal accessories, and fashion accessories

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

 

CONTACT EXAMINING ATTORNEY

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

The applicant is encouraged to contact the examining attorney via email or at the number below to resolve the above issues via Examiner’s Amendment.

 

 

/Roger T. McDorman/

Examining Attorney

Law Office 109

Roger.McDorman@uspto.gov

(571) 272-5224

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/1/2014 FOR U.S. APPLICATION SERIAL NO. 85954939

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 6/1/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.