To: | Fila Luxembourg S.à.r.L. (tmdocket@arentfox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86442929 - FILA - 028029.02710 |
Sent: | 2/24/2015 4:35:13 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86442929
MARK: FILA
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CORRESPONDENT ADDRESS: ANTHONY V. LUPO |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Fila Luxembourg S.à.r.L.
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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: 2/24/2015
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.
NO CONFLICTING MARKS in International Class 28
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks in International Class 028 that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUPPLEMENTAL SEARCH may be required following provision of an acceptable definite identification of goods that is properly classified.
INFORMALITIES
The applicant must respond to the following informalities.
Identification of Goods
The wording in the identification of goods is indefinite and must be clarified because the applicant has listed three categories of goods that may include goods in other classes. Each category must be followed by “namely” and then by the particular goods in that class as shown below. Note that if the applicant intended equipment in other classes, instructions are provided below for adding classes. See the online goods and services manual referenced below for assistance in crafting an acceptable identification and classification. See TMEP §1402.01. The applicant may adopt the following identification, if accurate:
Exercise equipment, namely, [INDICATE the particular goods by common commercial name, e.g., rowing machines, chest expanders, exercise weight cuffs]; yoga equipment, namely, [INDICATE the particular goods by the common commercial name for the goods, e.g., yoga mats, stretch bands used for yoga]; Pilates equipment, namely, [INDICATE the particular goods by common commercial name, e.g., exercise balls], in International Class 028.
Note that not all equipment is in International Class 028. Please consult the online goods and services manual for acceptable language and classification. For example, consider the following:
General purpose bags for carrying yoga equipment, in International Class 018.
Bags specially adapted to carry yoga equipment, in International Class 028.
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.
Amendment or Addition of International Classes
If the applicant adopts the suggested amendments to the identification of goods and adopts goods in more than one class, the applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes. 37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§ 805, 1401.
Fees
The applicant has paid fees for one class. The fees for adding classes to an application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission. See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).
Requirements for a Multiple Class Application
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Note: The acronym “TMEP” used in official USPTO letters and notices refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO staff attorneys that explains the laws and procedures governing the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure and notes each new version by the month and year it issues. The current version of the TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp.
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements.
Instructions for signing responses are provided below.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda A. Powell/
Linda A. Powell
Examining Attorney
L.O. 106 United States Patent and Trademark Office
571-272-9327
linda.powelll@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.uspto.gov/. 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.