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: 9/7/2017

 

This Office action is in response to applicant’s communication filed on August 28, 2017.

 

Upon further review of the record, the examining attorney has determined that a non-final office action must be issued to address a new issue.  The examining attorney regrets any inconvenience this may cause.

 

SUMMARY OF ISSUES:

·       New Issue:  Disclaimer Required

·       Continued/Maintained Issues:

1) Search Deferred

2) Identification of Goods/Services

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “BALL” because it merely describes a feature and subject of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

The term BALL is defined as by Merriam-Webster online dictionary as: a spherical or ovoid body used in a game or sport, and the subject of the applicant’s services is basketball.  See attached. Therefore, the wording must be disclaimed.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “BALL” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

The following issues are continued and maintained:

 

ACTION ON MERITS DEFERRED & SEARCH FOR REFERENCES DEFERRED IN PART

A review of the merits of the application is deferred, and a search of the USPTO’s database of registered and pending marks is deferred in part, until applicant responds to this Office action by satisfying one of the following:

 

(1)       Specify the number of classes for which registration is sought and provide the filing fees for all such classes.

 

(2)       Delete class(es) from the application not covered by the fee(s) already submitted. 

 

See TMEP §§810.01, 1401.04. 

 

The application was filed online as a Trademark Electronic Application System (TEAS) Reduced Fee (RF) application and therefore the filing fee per class was $275.  See 37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §810.  The application identifies goods and/or services in at least 8 classes, which require a total of fees in the amount of $2200.  Applicant submitted $275 with the application.  The fee(s) submitted was sufficient for only 1 class. 

IDENTIFICATION OF GOODS/SERVICES

 

The amended identification of services remains unacceptable because the applicant failed to specify the nature of some of the services, and the amendment continues to misclassify the services. For example, clothing is in Class 25, not Class 41. Further, the applicant has merely re-submitted the same identification of goods/services in a rearranged but still unacceptable recitation.  The amendment fails to clarify and properly classify the goods/service as required.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id. As previously stated, the strikethrough represents goods/services that are not classified in Class 41. Applicant must also delete the misclassified and duplicate/redundant wording identified by the strikethrough below.

The applicant may adopt the following, if accurate:

 

Class 41 - Entertainment services, namely, [specify]; Organizing, producing and arranging sporting events, exhibitions, and tournaments in the field of [specify type of sport]; providing web sites in the fields of sports, entertainment, human interest and lifestyle; fan club services; production and distribution of television shows, radio shows and motion pictures; Entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions; the production and distribution of radio and television shows featuring basketball games, basketball events and programs in the field of basketball; conducting and arranging basketball clinics and camps, coaches clinics and camps, cheerleading and dance team clinics and camps and basketball games; entertainment services in the nature of personal appearances by a costumed mascot or dance team at basketball games and exhibitions, clinics, camps, promotions, and other basketball-related events, special events and parties; fan club services; entertainment services, namely, providing a website featuring non-downloadable multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball; providing news and information in the nature of statistics and trivia in the field of basketball; on-line non-downloadable games, namely, computer games, video games, interactive video games, action skill games, arcade games, adults' and children's party games, board games, puzzles, and trivia games; electronic publishing services, namely, publication of magazines, guides, newsletters, coloring books, and game schedules of others on-line through the Internet, all in the field of basketball; providing an online computer database in the field of basketball; Toys, games and sporting goods, namely, basketballs, golf balls, playground balls, sports balls, rubber action balls and foam action balls, plush balls for games, plastic balls for games, basketball nets, basketball backboards, miniature basketball backboards, pumps for inflating basketballs and needles therefore; golf clubs, golf bags, golf putters, golf accessories, namely, divot repair tools, tees, ball markers, golf bag covers, club head covers, golf gloves, golf ball sleeves, golf putting greens, electronic basketball table top games, basketball table top games, basketball board games, action skill games, adult's and children's party games, trivia information games and electronic video arcade game machines, basketball kit comprised of a net and whistle, dolls, decorative dolls, collectible dolls, toy action figures, bobblehead action figures, stuffed toys, plush toys, jigsaw puzzles, toy building blocks, Christmas tree ornaments and Christmas stockings; toy vehicles in the nature of cars, trucks, trains and vans, all containing basketball themes, novelty foam toys in the shapes of fingers and trophies, toy trophies, playing cards, card games, toy noisemakers, pet toys; beach toys, namely, beach balls, inflatable balls, toy pails, toy shovels, sand toys, sand box toys, water-squirting toys; pool accessories, namely, swim floats, pool floats, toy water rafts, foam floats, swim rings, pool rings, foam rings, body boards, surf boards, swim fins, surf fins, arm floats and water wing swim aids for recreational use; volleyball game kits comprised of ball, net, sidelines and whistle, and water polo game kits comprised of ball, net and whistle; decorative cloth wind socks; athletic equipment, namely, pads and protectors; games, toys, playthings and sporting equipment; Providing a website featuring online non-downloadable audio recordings and video recordings featuring entertainment and information in the field of basketball; audio discs, video discs, computer laser discs, pre-recorded audio and video cassettes, pre-recorded audio and video tapes, pre-recorded compact discs, pre-recorded computer laser discs, and downloadable data files, all featuring entertainment and information related to basketball; computer accessories, namely, mouse pads, computer monitor cardboard frames, all related to basketball; computer programs for viewing information, statistics or trivia about basketball; downloadable and non-downloadable software featuring basketball themes; computer skins, namely, fitted plastic film for covering and providing a scratch proof barrier for computer devices; computer game software; wireless telephones; radios, telephones, and cell phone accessories, namely, cell phone covers; video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear straps and chains; eyeglass and sunglass cases; magnets; disposable cameras; credit cards and pre-paid telephone calling cards magnetically encoded; downloadable video recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet, for use in designing plastic film computer skins to protect computer monitors, for use in creating avatars for playing games and for use in remotely manipulating computer cursors over the Internet; downloadable electronic publications in the nature of magazines, newsletters, coloring books, game schedules all in the field of basketball provided over the Internet; downloadable catalogs provided over the Internet featuring an array of basketball-themed products; downloadable greeting cards provided over the Internet; software applications in the field of games and planners; Clothing, namely, hosiery, footwear, basketball shoes, basketball sneakers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts, slacks, caps, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps, sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps, novelty headwear with wigs; providing streaming audiovisual content over a computer network; jewelry and key chains; paper and paper goods; party supplies; flags and banners; providing a web site featuring sports information, sports news, and sports league player statistics; Organizing, producing and promoting sports league activity in the field of [specify sport] and licensing of intellectual property associated therewith; Publications and printed matter, namely, basketball trading cards, trading cards, stickers, decals, commemorative basketball stamps, collectible cardboard trading card discs, memorandum boards, clipboards, paper coasters, post cards, place mats of paper, facial tissues, note cards, memo pads, note pads, ball point pens, crayons, felt tip markers, rubber bands, pencils, pen and paper holders, desktop document stands, scrap books, rubber stamps, drafting rulers, paper banners and flags, 3-ring binders, stationery folders, wirebound notebooks, portfolio notebooks, unmounted and mounted photographs, posters, calendars, bumper stickers, book covers, bookmarks, wrapping paper, children's activity books, children's coloring books; statistical books, guide books, and reference books, all in the field of basketball; magazines in the field of basketball, catalogs in the field of basketball, commemorative game and souvenir programs related to basketball, paper pennants, stationery, stationery-type portfolios, post cards, invitation cards, printed certificates, greeting cards, Christmas cards, holiday cards, informational statistical sheets for basketball topics; newsletters, brochures, pamphlets, and game schedules in the field of basketball; bank checks, check book covers, check book holders, comic books; non-magnetically encoded credit cards and telephone calling cards not magnetically encoded; Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes, business card cases, book bags, all purpose sports bags, golf umbrellas, gym bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold empty, garment bags for travel, handbags, key cases, leather key chains, suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, pet clothing, pet leashes, and pet collars

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  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 or as acceptably amended.  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).

Applicant must list the goods and/or services by international class.  TMEP §§801.01(b), 1403.01.

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.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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).  The application identifies goods and/or services that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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.

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.

 

 

RESPONSE GUIDELINES

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

 

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.  

 

 

 

/Andrea D. Saunders/

Trademark Attorney

Law Office 117

571-270-3856

Andrea.Saunders@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 9/7/2017 FOR U.S. APPLICATION SERIAL NO. 87286132

 

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 9/7/2017 (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.