UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/30/2017

 

 

THIS IS A FINAL ACTION.

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

This Office action is in response to applicant’s communication filed on May 5, 2017.

 

The prior Office Action(s) is/are incorporated by reference.

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

IDENTIFICATION OF GOODS

 

Particular wording in the U.S. application’s identification of goods has been found to exceed the scope of goods in the foreign registration upon which the U.S. application relies.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods that are within the scope of the goods in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, goods that exceed the scope of the foreign registration are not considered part of the identification of goods in the U.S. application.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods as follows:  “handbags for ladies, clutch bags, evening bags, handbags for men, purses, wallets, reusable shopping bags, sports bags, key bags, beach bags, make-up bags sold empty; credit card cases and holders; briefcases for documents; business cases; business card cases; shoulder bags; messenger bags, belt bags; all of the aforesaid goods made of leather or imitation of leather; umbrellas; travelling bags, carry-all bags, holdalls, weekend bags, back packs, wash bags for carrying toiletries, suit bags.” 

 

However, the foreign registration identifies the following goods in relevant part:  “leather and imitations of leather and goods made of these materials, included in Class 18” and “trunks and travelling bags.”

 

The applicant states “carry-all bags, holdalls, weekend bags, back packs, wash bags for carrying toiletries, suit bags” are within the scope of “travelling bags” and therefore may be stated without the limitation of “of leather or imitation of leather.”  It is noted that “travelling bags” is stated separately.  If the applicant chooses to list these types of bags under the purview of “travelling bags,” then they must be so amended.  Otherwise, with the exception of weekend bags, they exceed the scope of “travelling bags” as the bags may not be for travelling.  For example, carry-all bags are merely “a large bag or carrying case.”  Holdalls encompasses many different types of bags.  A backpack is “a bag with straps that go over your shoulders so that you can carry things on your back when you are walking or climbing.”  A wash bag is “a bag for toiletries.”  A suit bag is a bag that covers or holds suits.  A suit bag is the same as a garment bag which may also be used for storage.  These bags are not necessarily traveling bags.  Please see the attached definitions.  Therefore, the bags must be amended to state that they are travelling bags, if accurate, to be within the scope of the foreign registration identification.

 

In addition, “wash bags for carrying toiletries” must be amended to state that they are “sold empty,” if accurate.

 

These goods stated above in the U.S. application exceed the scope of the goods in the foreign registration.  Thus, these goods in the U.S. application are not acceptable and may not be amended to correspond with the goods in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)            Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application—The following identification in class 18 may be adopted, if accurate:

Handbags for ladies, clutch bags, evening bags, handbags for men, purses, wallets, reusable shopping bags, sports bags, key bags, beach bags, make-up bags sold empty, credit card cases and holders, briefcases for documents, business cases, business card cases, shoulder bags, messenger bags, and belt bags, all of the aforesaid goods made of leather or imitation of leather; umbrellas; travelling bags, and traveling bags, namely, carry-all bags, holdalls, weekend bags, back packs, wash bags sold empty for carrying toiletries, and suit bags.

 

or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or to expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

The requirement is maintained and made FINAL.

 

Response to Final Office Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “carry-all bags, holdalls, back packs, wash bags for carrying toiletries, and suit bags.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods: 

 

 

Handbags for ladies, clutch bags, evening bags, handbags for men, purses, wallets, reusable shopping bags, sports bags, key bags, beach bags, make-up bags sold empty, credit card cases and holders, briefcases for documents, business cases, business card cases, shoulder bags, messenger bags, and belt bags, all of the aforesaid goods made of leather or imitation of leather; umbrellas; travelling bags, weekend bags, in class 18;

 

Shirts; t-shirts; polo shirts; vests; blouses; blazers; dresses; suits; cardigans; pullovers; ponchos; sweat shirts; tank-tops; tops; leather jackets; mantles; coats ; jackets; trousers; jeans; shorts; capris; bermuda shorts; skirts; socks and stockings; leggings; tights; knee-high stockings; leg warmers; pantyhose; undershirts; boxer shorts; underpants; slips; g-strings; brassieres; sports bras; bodies namely, bodysuits, one-piece garment for women; pajamas; sleeping garments; sleep shirts; pajama bottoms; nightdresses; thermal underwear, padded underwear; hats; caps, bonnets; shoes; boots; sandals and beach shoes; mules; slippers; flip flops; sneakers, sport shoes, clogs, bathing slippers; bikinis; tankinis; bathing suits; swimming trunks; swimming shorts; bathrobes; pareos; bathing caps; sports shirts; track suits; training suits; jogging suits; sweat pants; sports jackets; skiwear; sports tops, sports pants; infinity scarves; scarves; cravats; gloves; belts; ties; bandanas; braces; romper suits, baby suits, babygros, namely, one piece garment for infants, toddlers and children; children's and infant's apparel, namely, rompers; bibs made of textile material, in class 25.

 

Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Alex Seong Keam/

Atttorney-Advisor

U.S. Patent and Trademark Office

Law Office 114

Phone: (571) 272-9176

Email: alex.keam@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/30/2017 FOR U.S. APPLICATION SERIAL NO. 87110839

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/30/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.