Offc Action Outgoing

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:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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).

However, applicant must respond to the requirement set forth below.

IDENTIFICATIONS REQUIRE AMENDMENT

THIS REQUIREMENT APPLIES ONLY TO THE SPECIFIED GOODS AND SERVICES.

The word “pins” in the International Class 14 identification of goods is too broad and includes goods in various international classes. See TMEP §§1402.01, 1402.03. For example, “pins” could refer to “pins being jewelry” in International Class 14 and “hair pins” in International Class 26.

The wording “key rings of metal” is misclassified; these goods are classified in International Class 6. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Only key rings of precious metal are classified in International Class 14.

The wording “providing a website featuring musical performances, musical videos, film clips, photographs and other multimedia materials” is indefinite and too broad. See TMEP §§1402.01, 1402.03. The wording “other multimedia materials” must indicate the subject matter of the materials. Moreover, applicant must indicate that the “musical performances, musical videos, film clips, photographs and other multimedia materials” are non-downloadable; otherwise, this wording could refer to downloadable goods in International Class 9, or to an online retail store service featuring downloadable goods in International Class 35.

Applicant may adopt the following identifications, if accurate:

Class 6: Key rings of metal

Class 9: [NO CHANGE REQUIRED]

Class 14: Jewelry; pins being jewelry; key rings of precious metal

Class 16: [NO CHANGE REQUIRED]

Class 25: [NO CHANGE REQUIRED]

Class 26: Hair pins

Class 41: Entertainment services, namely, live performances by a musical band; providing a website featuring non-downloadable musical performances, musical videos, film clips, photographs and other multimedia materials featuring {indicate subject matter of the multimedia materials, e.g., musical performances}

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

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. See TMEP §1402.04.

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and services that are classified in at least seven classes; however, applicant submitted fees sufficient for only five classes. Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

(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 fees already paid. The fees for adding classes to a regular TEAS application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.

(4) Submit a specimen for each international class. The current specimens are acceptable for International Classes 6, 9, 14, 16, 25, and 41, and applicant needs a specimen for International Class 26 (should that class be added in response to this Office action).

Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.

(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.6(a)(1)(i)-(ii), 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§810, 904, 1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(a) 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.

RESPONSE REQUIRED

For this application to proceed further in the registration process, applicant must explicitly address the requirement raised in this Office action by setting forth in writing the required changes. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response. 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. All informal 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.