To: | Predator Designs Inc. (ngarner@cameronip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86155217 - XS - 1885T05US |
Sent: | 4/14/2014 6:36:51 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86155217
MARK: XS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Predator Designs Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/14/2014
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 OF OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES that applicant must address:
REQUIREMENT FOR AN ACCURATE MARK DESCRIPTION
The mark consists of the stylized letters “XS”.
DISCLAIMER REQUIRED
The term “XS” is a common acronym for “extra small.” See, http://www.acronymfinder.com/XS.html, http://dictionary.reference.com/browse/XS?r=66. Applicant’s goods are “helmets geared towards women and youth in action sports, with a focus on small sizes….” See, http://predatorskateboarding.com/xs-helmets/, http://www.longboardism.com/2013/08/predators-sister-brand-xs-helmets-launch-focus-women.html; see also, “XS is a new brand of helmets branched off Predator Helmets. Same manufacturer, same materials and design, but with a smaller outer shell for a better fit for those with smaller domes….” http://www.daddiesboardshop.com/woodshop/project/launch-of-xs-helmets-111. Thus, applicant’s goods are helmets that are extra small. Moreover, the term “XS” is commonly used in relation to helmets to denote that the helmets are extra small. See, http://www.ebay.com/bhp/arai-xs, http://www.amazon.com/Bell-Rogue-Motorcycle-Helmet-Matte/dp/B00AYC5HZC, http://www.shopgoodwill.com/auctions/TPI-Motorsports-Extra-Small-Helmet-XS-13831252.html. Therefore, as applicant’s helmets are extra small, the term “XS” is merely descriptive of a feature and characteristic of applicant’s goods and must be disclaimed.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “XS” apart from the mark as shown.
TMEP §1213.08(a)(i).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. It does not affect the appearance of the applied-for mark. A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03. The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
REQUIREMENT FOR ADDITIONAL INFORMATION ABOUT THE GOODS
To permit proper examination of the application, applicant must submit additional product information about the goods. See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Additionally, applicant must provide answers to the following questions:
1.) Are applicant’s helmets smaller than other helmets that are commercially available?
2.) What are the sizes of applicant’s helmets?
3.) Does applicant offer helmets that are extra small?
4.) Does applicant offer helmets that are smaller than most small sized helmets?
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
CORRESPONDENCE GUIDELINES
Instructions for responding to this Office action are located below the signature block.
/N. Gretchen Ulrich/
Trademark Attorney-Advisor
Law Office 113
U.S. Patent & Trademark Office
phone: (571) 272-1951
gretchen.ulrich@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 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.