Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

ISSUE/MAILING DATE: 11/30/2018

 

STRICT DEADLINE TO RESPOND TO THIS LETTER:  To avoid partial abandonment of applicant’s trademark application, the USPTO must receive a complete response within (1) thirty (30) days of the date of issuance of this letter, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer.

 

Applicant filed a timely request for reconsideration on October 29, 2018, responding to the final Office action that issued on April 27, 2018.  Although the request does not resolve all outstanding issues, applicant’s response was filed within the six-month response period and otherwise complies with 37 C.F.R. §2.65(a)(2).  Thus, applicant is being granted thirty (30) days from the date of issuance of this letter or the remainder of the sixth-month response period, whichever is longer, to resolve all outstanding issues.  See 37 C.F.R. §2.65(a)(2); TMEP §§715.03(a)(ii)(C), 718.03(b). 

 

In the present case, applicant did not consider or comply with the following requirements raised in the previous final Office action:  amend all indefinite language in the identification of goods.  All other issues have been satisfied.  Applicant submitted an amended identification of goods that includes indefinite language as well as language that is beyond the scope of the original identification.  As a result, further amendment of the identification of goods is required.

 

The following is a summary of issues that applicant must address:

 

SUMMARY OF ISSUES:

• Particular Goods in Amended Identification Exceeds Scope of Goods In Original Application
• Requirement – Amend Identification of Goods

 

PARTICULAR GOODS IN AMENDED IDENTIFICATION EXCEEDS SCOPE OF GOODS IN ORIGINAL APPLICATION

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “Games; playthings; gymnastic articles not included in other classes.”

 

However, the proposed amendment identifies the following goods:  “sporting articles not included in other classes, namely,…sleds.” 

 

This portion of the proposed amendment is beyond the scope of the original identification because the wording “sporting articles” was not originally listed in the identification and the specific item “sleds” identifies goods that are vehicles used on snow and ice for recreation or winter racing sports and thus do not qualify as a type of gymnastic article.  See http://dictionary.cambridge.org/us/dictionary/english/sled; http://en.wikipedia.org/wiki/Sledding.

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

In the previous Office action, applicant was required to amend all indefinite language provided in its identification of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01.  In its response, applicant submitted an amended identification that contains indefinite language and improper use of punctuation.  Accordingly, for the reasons set forth below, applicant must amend all indefinite language in the identification of goods.

 

The identification uses improper punctuation, namely, the question mark symbol.  Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use question marks in an identification.  In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The wording “toy construction kits” is indefinite and must be clarified because it fails to indicate the specific contents of the kits.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the specific toy items that comprise the toy construction kits.

 

Applicant may adopt the following wording, specified in bold, if accurate:

 

International Class 28: Games and playthings, namely, board games, dice games, tabletop games, action target games, party games, puzzles, playing cards and card games, mechanical toys, parlor games, stuffed toys, toy construction kits comprising [indicate specific items comprising the kits, e.g., toy figures, toy vehicles, toy buildings, etc.], toy vehicles; gymnastic articles not included in other classes, namely, springboards, appliances for gymnastics, athletic supporters, protective supports for shoulders and elbows, weight lifting belts, athletic tape, waist trimmer exercise belts.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See 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.

 

RESPONSE GUIDELINES

 

If applicant does not resolve these outstanding issues within the thirty-day time period or the time remaining in the response period, the following goods will be held abandoned and deleted from the application:  “…toy construction kits”.  See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).

 

The application will then proceed with the following goods only: 

 

International Class 28: “Games and playthings, namely, board games, dice games, tabletop games, action target games, party games, puzzles, playing cards and card games, mechanical toys, parlor games, stuffed toys, toy vehicles; gymnastic articles not included in other classes, namely, springboards, appliances for gymnastics, athletic supporters, protective supports for shoulders and elbows, weight lifting belts, athletic tape, waist trimmer exercise belts”.

 

This letter does not extend the time for filing an appeal with the Trademark Trial and Appeal Board.  TMEP §§715.03(a)(ii)(C), 718.03(b).  An applicant must file a notice of appeal online using the Electronic System for Trademark Trials and Appeals (ESTTA) within six months of the issuance date of the final Office action.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(3), 2.142(a); TMEP §§715.03(c), 718.03(b).  The fee for filing an appeal through ESTTA is $200 per class.  37 C.F.R. §2.6(a)(18)(ii).

 

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.  

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@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 11/30/2018 FOR U.S. APPLICATION SERIAL NO. 87500328

 

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 11/30/2018 (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.