To: | DKH Retail Limited (trademark@winthrop.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86427054 - SUPERDRY - 14110.1 |
Sent: | 2/11/2015 6:35:25 AM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86427054
MARK: SUPERDRY
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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: DKH Retail Limited
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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: 2/11/2015
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.
The requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.
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:
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b).
IDENTIFICATION OF GOODS AND/OR SERVICES
The identification of goods and/or services is indefinite and must be clarified. See TMEP §1402.01. Specifically, the applicant must describe the goods encompassed within the indefinite wording in the identification. The suggested identification below contains additional guidance.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a). If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1401.05(d), 1402.03(a).
It is the applicant’s duty and prerogative to identify the goods and/or services. TMEP §1402.01(e). Using identification language from the U.S. Acceptable Identification of Goods and Services Manual generally enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods and/or services. TMEP §1402.04. 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.
However, the applicant may adopt the following identification of goods and/or services, if accurate [changes in bold text]:
Apparatus and equipment for games, namely, [list the common commercial or generic name for the goods, e.g., balls for sports. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; appliances for gymnastics; articles for playing golf, namely, [list the common commercial or generic name for the goods, e.g., gold clubs. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; sporting articles and equipment, namely, [list the common commercial or generic name for the goods, e.g., baseball bats. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; surfboards; bags adapted for sporting articles, namely, [list the common commercial or generic name for the goods, e.g., bags for skateboards. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; balls for games; ball pumps especially adapted for use with balls for games; bags specially adapted for handheld video games; bags for skateboards; bags especially designed for skis and surfboards; balls, namely, golf balls; balls for sports including, basketballs, baseballs, soccer balls, footballs, rugby balls, netballs, tennis balls, exercise balls, beach balls; billiard equipment; board games; bowling bags; bodysurfing boards; body boards; body-training apparatus; body-training equipment, namely, [list the common commercial or generic name for the goods, e.g., bar-bells. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; card games; cases adapted for sporting articles, namely, [list the common commercial or generic name for the goods, e.g., archery bow bags. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; darts; dart boards; gloves for sports, namely, [list the common commercial or generic name for the goods, e.g., batting gloves. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; gymnastic apparatus; hockey pucks and sticks; indoor fitness apparatus, namely, [list the common commercial or generic name for the goods, e.g., exercise treadmills. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; inflatable toys; kite boards; kite board apparatus , namely, [list the common commercial or generic name for the goods. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; knee guards for athletic use; lacrosse sticks; nets for sports; playground apparatus, , namely, [list the common commercial or generic name for the goods, e.g., playground slides. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; playing cards; badminton racquets; shin guards for athletic use; skateboards; ice skates; skis; ski cases; snowboards; swimming equipment, namely, [list the common commercial or generic name for the goods, e.g., flippers for swimming. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; tennis rackets and covers; video game apparatus, namely, [list the common commercial or generic name for the goods, e.g., arcade video game machines. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; wake boards; waterskis; yoga apparatus, namely, mats, blocks and straps; surfboard leashes; surfboard wax; volley balls; windsurfing boards; windsurfing board apparatus, namely, [list the common commercial or generic name for the goods, e.g., windsurfing gloves. If there is no common commercial or generic name for the goods, then the applicant must describe the product and its intended uses.]; harness for windsurf boards; stand-up paddle boards; athletic protective pads for {indicate type and purpose}; snowboard bindings; sports equipment for boxing and martial arts, namely, boxing gloves and punching bags in International Class 28.
INFORMATION ABOUT GOODS/SERVICES REQUIRED
To permit proper examination of the application, applicant must submit additional information about the goods. An applicant can be required to provide more information if it is necessary for proper examination of the application. 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see 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). The information requested below is necessary to the examination of the application because it will provide a more in-depth understanding of the mark and/or issue(s) at hand.
Merely stating that information about the goods or services 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).
The applicant must directly answer the following question(s) and/or provide the information requested:
1. Do SUPERDRY or SUPER DRY have any significance as applied to the goods and/or services other than trademark and/or service mark significance?
2. Do SUPERDRY or SUPER DRY have any significance in the relevant trade or industry other than trademark and/or service mark significance?
3. If available, the applicant will provide a website address at which the goods and/or services are offered and/or the mark is used. If no website is available, then the applicant will state this fact for the record.
QUESTIONS ABOUT THIS ACTION
As noted above, if applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to TEAS@uspto.gov via e-mail.
For status inquiries, an applicant may check the status of or view documents filed in his or her trademark and/or service mark application or registration 24 hours a day, 7 days a week using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/. To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”
For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC). TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays. A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/#url=2014.
If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.
/Brian Pino/
Examining Attorney
Law Office 114
571.272.9209 Telephone
571.273.9209 Facsimile
Brian.Pino2@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.