To: | IDEAL STANDARD INTERNATIONAL BVBA (nyctrademarks@bakermckenzie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86092915 - CHAMPION - 39231657-001 |
Sent: | 2/4/2014 8:24:11 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86092915
MARK: CHAMPION
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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: IDEAL STANDARD INTERNATIONAL BVBA
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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: 2/4/2014
The referenced application has been reviewed by the assigned trademark examining attorney. The following issues were noted in this review:
Applicant must respond timely and completely to these issues, which are further discussed below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Prior-Filed Application: Applicant Not Entitled to Register
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Identification of Goods—International Classes 20 and 21
The identification of goods in International Class 11 is acceptable. However, the identification in the other classes is unacceptable because it contains indefinite wording and lists goods that may be misclassified. TMEP §1402.01.
In Class 20, the wording “bathroom consoles” is unacceptable as indefinite; the applicant must more specifically identify these goods. If the goods are in the nature of tables, cabinets, or other furniture, they are properly classified in Class 20. However, other bathroom items, particularly plumbing items (such as sinks) are properly classified in Class 11. Similarly “bathroom enclosures” is indefinite and requires clarification; bathtub and shower enclosures are properly classified in Class 11.
In Class 21, “tissue holders” is unacceptable as indefinite. The applicant must further clarify these goods, so that proper classification can be determined. While toilet tissue holders and dispensers for facial tissue are properly classified in Class 21 regardless of material composition, tissue box covers of metal are in Class 6. Bathtub and shower grab bars of metal are also properly classified in Class 6.
The applicant must amend the application to adopt an acceptable identification and classification of goods. 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.
The applicant may amend to adopt one or more of the following identifications, if accurate:
INTERNATIONAL CLASS 6: Bathtub and shower grab bars of metal; tissue box covers of metal.
INTERNATIONAL CLASS 11: Plumbing fixtures, namely, lavatories, bathtubs, shower stalls, urinals, bidets, hand wash basins in the nature of sinks, vanity basins in the nature of sinks, and kitchen sinks; plumbing fittings, namely, bathtub spouts and shower heads; bathtub surrounds; shower surrounds; bathtub and shower enclosures.
INTERNATIONAL CLASS 20: Bathroom vanities; bathroom consoles in the nature of tables and cabinets; bathroom mirrors; bathroom shelving; bathroom tables; bathtub grab bars not made of metal; shower grab bars not made of metal; portable shower seats; portable bath seats.
INTERNATIONAL CLASS 21: Towel bars, towel rings, toilet paper holders, dispensers for facial tissue, lotion dispensers, and soap dishes, all made of metal.
Multiple Class Application
The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
If applicant prosecutes this application with additional classes, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods by international class; and
(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The filing fees for adding classes to an application are as follows:
(1) A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).
(2) A $375 fee per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).
Claim of Ownership of Prior Registrations
If applicant is the owner of U.S. Registration Nos. 2843945 and 3146752 (see the attached registrations), then applicant must submit a claim of ownership. See 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 2843945 and 3146752.
/Kimberly Frye/
Examining Attorney
Law Office 113
(p)571-272-9430
(f) 571-273-9430
(e) kimberly.frye@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.