To: | Hutchingame Growth Capital Corporation (mhomyk@blankrome.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87218504 - DAYTON - 151178-00101 |
Sent: | 3/6/2019 7:52:18 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87218504
MARK: DAYTON
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Hutchingame Growth Capital Corporation
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. 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: 3/6/2019
The application was suspended pending the disposition of application Serial No. 86967274. That application has abandoned. Applicant claimed ownership of Application Serial No. 87016479 through an assignment. However, the mark cannot be approved for publication because there is no foreign registration of record to support the Section 44(e) basis. Furthermore, the identification of goods is unacceptable and it includes goods that are misclassified. Applicant must explain the significance of the mark as applied to the goods. Before the mark is approved for publication, applicant must address these issues.
Significance of DAYTON
Section 44(e) Basis
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
Identification of Goods
Specific wording in the amended identification of goods must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
“eyewear, namely, sunglasses, eyeglasses, eyeglass frames; non-illuminated signs [wording “non-illuminated signs” is indefinite and may identify goods in multiple classes—identify signs using online ID Manual referenced above and classify accordingly]; motorcycle clothing, namely, motorcycle riding suits [wording “motorcycle riding suits” identifies Class 25 goods], bandannas [wording “bandannas” identifies Class 25 goods], protective helmets” – Class 9;
“bags and luggage, namely, purses, wallets, trunks and travelling bags, backpacks, duffel bags, pouches [term “pouches” is indefinite]” – Class 18;
“footwear, namely, work boots and dress shoes; footwear, namely, motorcycle boots; clothing, namely, leather jackets, golf shirts, t-shirts, nylon shells and baseball hats; leather clothing, namely, jackets, vests, pants; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pajamas, underwear; clothing accessories, namely, belts, chaps, gloves, mitts, socks, suspenders, scarves, wrist bands; headwear, namely, head bands headbands, hats, knit hats, rain hats, caps, beanie caps” – Class 25; [ACCCEPTABLE]
“belt buckles; parts of footwear, namely, boot tips [“boot tips” Class 25 goods], sole plates [“sole plates” Class 25 goods], heel guards [wording “heel guards” identifies Class 25 goods], decorative boot straps [wording “boot straps” identifies Class 25 goods], boot chains, shoe buckles, shoe trimmings” – Class 26.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or 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).
(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).
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).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Christopher Buongiorno/
Attorney
Law Office 102
(571) 272-9251
christopher.buongiorno@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.