UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 87521347
MARK: LILY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Tottenham Hotspur Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: 10/13/2017
ISSUES APPLICANT MUST ADDRESS: On October 12, 2017, the trademark examining attorney and DEBORAH K. SQUIERS discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Applicant’s mark is “LILY” for “class 9: scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; holograms; pre-recorded compact discs; pre-recorded compact discs featuring games; pre-recorded motion picture films; keyboards; cd players; bags for cameras and photographic equipment; magnets; magnets (decorative -); magnetic badges; fridge magnets; usb chargers; frames for spectacles and sunglasses; sunglasses; sunglasses frames; cases for spectacles and sunglasses; cases for children's eyeglasses; eyewear; smartglasses; chains for spectacles and for sunglasses; application software; application software for smart phones; computer programs for video and computer games; downloadable computer software applications; education software; downloadable wallpapers for computers and phones; computer games entertainment software; parts and fittings relating to all the aforesaid goods; class 16: paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paintbrushes; typewriters and office requisites; instructional and teaching material; plastic materials for packaging; printers' type; printing blocks; advent calendars; figurines made from cardboard; figurines made from paper; graphic prints; bags made of paper for packaging; bags made of plastics for packaging; boxes made of cardboard; display boxes of cardboard; food wrappers; gift bags; gift boxes; gift cards; gift wrapping paper; paper party bags; ball pens; attachments for pencils; colour pencils; fountain pens; felt pens; leather pencil cases; mechanical pencils; pen and pencil holders; pencil cups; pens; stamps; cap erasers; rubber erasers; hole punches; office staplers; educational books; instructional and teaching materials; albums; photograph albums; scrapbooks; sticker albums; stamp albums; children's books; children's activity books; commemorative books; printed pamphlets; metal money clips; handkerchiefs of paper; flags of paper; napkins made of paper for household use; paper bunting; paper cocktail parasols; paper table napkins; paper table linen; paper place mats; parts and fittings relating to all the aforesaid goods; class 24: textiles and substitutes for textiles; bed covers; table covers; adhesive fabric for application by heat; bedroom textile fabrics; fabrics for textile use; felt; furnishing fabrics; knitted fabrics; oilcloth; printed fabrics; textiles made of cotton; textiles made of synthetic materials; textiles treated with a flame resistant finish; curtains for windows; curtains for showers; curtains and lace curtains of textiles or plastic; door curtains; draperies; adhesive labels (textile -); adhesive materials in the form of stickers; badges made of fabric material; iron-on cloth labels; printed textile labels; bed linen and table linen; cloth coasters; kitchen linen; kitchen towels; table covers; table runners; washing gloves; bed blankets; children's blankets; covers for cushions; covers for duvets; covers for pillows; blankets for household pets; blankets for outdoor use; sleeping bags; bathroom towels; beach towels; children's towels; parts and fittings relating to all the aforesaid goods; class 25: clothing; footwear; headgear; ankle socks; athletic footwear; athletic footwear for soccer; articles of clothing, footwear and headgear for babies and toddlers; baby shoes; baby sandals; baby pajamas; baby boots; baseball caps; bathing suits; bath robes; bath slippers; belts; belts made of leather; blouses; bobble hats; boots; boots for sports; bow ties; children's socks; clothing for children; coats; dresses; dressing gowns; ear muffs; fleece jackets; fleece bottoms; football boots; garters; gloves; hand warmers; hats; hooded tops; jogging tops; knitwear; loungewear; mittens; nightwear; neck warmers; neckties; pajamas for adults; pajamas for children; paper hats; party hats; raincoats; sandals; scarfs; shirts; shoes for adults; shoes for children; shorts; short-sleeved t-shirts; short-sleeved sports shirts; skirts; slippers; socks; sports jerseys; sweaters; sweatpants; tops; trousers; underwear; vests; waterproof jackets; waterproof footwear; parts and fittings relating to all the aforesaid goods; all of the aforesaid goods being goods which are associated with sports mascots; class 26: lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; appliqués; arm bands; armbands for holding sleeves; badges for wear, not of precious metal; belt buckles not of precious metal; boot laces; bows for clothing; brooches for clothing; cloth patches for clothing; clasps for clothing; cyclists (trouser clips for -); decoration of textile articles (heat adhesive patches for -); embroidered emblems; fabric appliques; embroidered badges; glass beads, other than for making jewelry; hat ornaments; laces for footwear; name tags of textile for identifying clothing; needle cases; novelty buttons; sewing kits; thimbles (sewing -); bands for the hair; barrettes; bows for the hair; clam clips for hair; decorative articles for the hair; elasticated hair bands; scrunchies; artificial garlands and wreaths; artificial corsages; parts and fittings relating to all the aforesaid goods; class 28: games and playthings; gymnastic and sporting articles; decorations for christmas trees; action toys; baby rattles incorporating teething rings; bags adapted for use with sporting equipment; balls for sports; balls for games; bath toys; beach balls; bean bag dolls; bells for christmas trees; cases specially adapted for sports equipment; cat toys; chessboards; christmas crackers; christmas stockings; christmas tree decorations, except confectionery and electric christmas lights; clockwork toys; dog toys; dolls; dolls' clothes; dominoes; electronic educational game machines for children; finger puppets; gloves for soccer goalkeepers; hand pads for sports use; infant development toys; inflatable toys; jigsaw puzzles; marbles for games; memory games; mobiles; paper party hats; pet toys made of rope; plastic toys; playing cards; plush toys; pull toys; puppets; shin guards; skittles; snow globes; stuffed toys; talking toys; teddy bears; toy building blocks; toy figures; toy models; toys; video game apparatus; spools incorporating coiled string which rewind and return to the hand when thrown; parts and fittings relating to all the aforesaid goods; class 41: education; providing of training; entertainment; information, advisory and consultancy services relating to the aforesaid”.
The registered marks are:
Reg. No. 4977163 “LILY’S HOME” for among other things, “Barometers; Hygrometers; Thermometers not for medical purposes; Timers”
Reg. No. 4881867 “LILY’S” for among other things, “paper napkins; facial tissue”
Reg. No. 4288187 “LILLY” and design for “footwear”
Reg. No. 4212616 “LILY” for among other things, “Charitable services, namely, conducting educational programs in the field of improving the quality of life of seniors; Charitable services, namely, organizing and conducting special events for social entertainment purposes the proceeds of which are donated to charity”
Reg. No. 3098677 “LILY’S” for “Toilet paper, tissue paper, paper towels”
Reg. No. 2599997 “LILY” and design/Asian characters for “stationery, ball point pens, writing ink, duplicating ink, drafting rulers, drawing rulers, ungraduated rulers, glues for stationery or household use, paper clips, rubber stamps, pencil sharpeners, notebooks, envelopes, electrical and mechanical pencil sharpeners, rubber erasers, pencils, pens for making marks, adhesive bands for stationery or household purposes, printed teaching materials for mathematics, typewriters, artists' water color pens, stamp pads, staplers, office corkboard pins, thumbtacks, mechanical pencils, paper staples for offices, paper hole punches, boxes for pens, steel ink pens, crayons, paintbrushes, drawing compasses, drafting compasses, drawing t-squares, drafting t-squares, paint sets for artists, terrestrial globes, chalks, drawing boards, drawing materials, namely, pads, paper boards”
Reg. No. 5257798 “LILLY’S KIDS” and design for “Mail order catalog services, retail and wholesale store services, online retail store services all featuring children and babies' apparel and accessories, bags, furniture, home goods, holiday goods, bath and body products, storage and children gift items”
Reg. No. 1653281 “LILLY’S KIDS” for “mail order services in the field of children's toys, games, furniture and clothing”
Reg. No. 3167823 “LILY” for “threads and yarns”
Reg. No. 5304955 “LILLEY” and design for among other things, “Footwear; Belts”
Reg. No. 5068852 “LILEE” for “On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring subscription boxes containing a wide variety of consumer goods of others; Retail store services featuring a wide variety of consumer goods of others”
Reg. No. 4262123 “LILEE” for among other things, “Broadband radios; Broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; Devices for wireless radio transmission; Radio receivers and transmitters; Radio transceivers; Radio transmitters and receivers; Wireless broadband radios; Wireless transceiver radio”
Reg. No. 3095669 “LILI” for “Educational services, namely, conducting classes and seminars in the field of leadership for insurance and financial professionals and distributing course materials in connection therewith”
Applying the above analysis, applicant’s mark is identical to the literal portion of the marks in Reg. Nos. 4212616, 2599997, and 3167823.
Applicant’s mark is also a virtually identical phonetic equivalent of the marks in Reg. Nos. 4288187, 5304955, 5068852, 4262123 and 3095669. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Applicant’s mark is also virtually identical to the dominant and recognizable portion of the marks in Reg. Nos. 4977163, 4881867, 3098677, 5257798, and 1653281. The ending of these registered marks includes an apostrophe and letter “s.” This additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).
In the instant case, it is also appropriate to give more weight to the "LILY’S" or “LILLY’S” portion of the marks in Reg. Nos. 4977163, 5257798 and 1653281 because of the descriptive nature of the wording “HOME” or “KIDS” when used in connection with items for home use or retail stores featuring items for children. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
Finally, while the marks in Reg. Nos. 4288187, 2599997, 5257798, and 5304955 contain stylization or design elements, when a composite mark contains both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
As such, viewed as a whole, applicant's mark is either, identical or substantially similar in sound, appearance, connotation and commercial impression to the registered mark.
As to the second half of the test, the goods and services are in part legally identical and otherwise closely related.
Specifically, applicant’s Class 9 “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images” are legally identical to the types of goods listed in Reg. Nos. 4977163 and 4262123.
Applicant’s goods in Class 16 are identical or legally identical to the goods in Reg. Nos. 4881867, 3098677, 2599997 because they are types of printed matter, office requisites, etc.
Applicant’s clothing, footwear, headgear, etc. in Class 25 is either legally identical or closely related to the types of clothing listed in Reg. Nos. 4288187 and 5304955. Please note that while applicant’s identification includes a limitation that the clothing items are “associated with sports mascots”, the registrant’s(s) identifications contain no limitations on the trade channels or associations of their clothing and therefore would be presumed to include the types of footwear and clothing made by applicant. To the extent that the clothing items are not identical, the examining attorney notes that all types of clothing commonly travel in the same trade channels and emanate from the same sources. See the attached website evidence from http://www.gap.com/ which indicates that all types of clothing for men, women, children and infants commonly emanate from a single source.
Applicant’s education and entertainment services in Class 41 are also legally identical to the education and/or entertainment services in Reg. Nos. 4212616 and 3095669.
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identifications.
Applicant’s various textiles and fabrics in Class 24 and needles, needle cases, sewing kits, and sewing needles in Class 26 are closely related to the threads and yarn in Reg. No. 3167823 because these goods are used together and are sold in the same types of craft stores. See the attached website evidence from http://www.joann.com/ which indicates that yarn and thread, fabrics, needles, and sewing equipment are commonly sold in the same retail trade channels.
Applicant’s goods in Classes 9, 16, 24, 25, 26 and 28 are also closely related to the services in Reg. Nos. 5257798, 1653281 and 5068852 because retail stores and mail order services commonly feature toys, clothing, games, office requisites, CDs, textile goods, and other types of consumer goods. See the attached website evidence from http://www.macys.com/ and http://www.walmart.com indicating that all types of consumer goods including CDs, eyewear, office requisites, clothing, linens, hair accessories, toys, games and sporting articles are encountered by consumers in the same retail trade channels.
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”); TMEP §1207.01(a)(ii).
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Thus since the marks are either identical or substantially similar and the goods and services are in part legally identical and/or otherwise closely related, there is a likelihood of confusion and registration must be refused.
REFUSAL LIMITED TO SPECIFIC CLASSES AND SERVICES
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SIGNED DECLARATION REQUIRED
The application was unsigned, resulting in the application not being properly verified. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1). Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing. The TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
For amendments to identifications consisting of class headings, the scope of the identification is limited to the ordinary meaning of the words in the heading. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1598 (TTAB 2014); TMEP §§1402.06(a), (b), 1402.07(a). Accordingly, applicant must amend the class heading(s) to identify specific goods and/or services that fall within the ordinary meaning of the words specified in the class heading(s). See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a).
Finally, the identification of goods and services needs clarification because it is in part indefinite and may contain goods and/or services classified in more than seven classes. For instance, the wording “pins” in Class 26 could include “pins being jewelry” in Class 14 or “hair pins” in Class 26. Applicant must also clarify the various types of apparatus, instruments, printed matter, clothing, textiles, games, playthings, etc. as indicated below. TMEP § 1402.01. The underlined wording in the identification below is indefinite and/or improperly classified and is followed by suggested wording in brackets and in bold. Applicant may adopt any or all of the following identifications and classifications, if accurate:
Class 9
scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments [must further indicate the types of apparatus and instruments, e.g., scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments, namely, cameras]; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity [must further clarify the types of apparatus and instruments, e.g., apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, light switches]; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers [may amend to: blank magnetic data carriers, or otherwise indicate the content, e.g., pre-recorded magnetic data carriers featuring soccer videos, recording discs [amend to: blank record discs or otherwise indicate the content, e.g., pre-recorded video discs featuring soccer videos]; compact discs, dvds and other digital recording media [must clarify the types of digital recording media and the subject matter, e.g., digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring soccer]; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software [must indicate the function of the software, e.g., computer software for organizing and compiling soccer statistics]; fire-extinguishing apparatus; holograms [printed holograms are in Class 16, may amend to: hologram apparatus {ok in Class 9}]; pre-recorded compact discs [must indicate the content, e.g., pre-recorded compact discs featuring music]; pre-recorded compact discs featuring games [amend to: pre-recorded compact discs featuring video games]; pre-recorded motion picture films [must indicate the content, e.g., pre-recorded motion picture films about soccer]; keyboards; cd players; bags for cameras and photographic equipment; magnets; magnets (decorative -) [must remove parenthesis, e.g., decorative magnets]; magnetic badges [must clarify the goods, e.g. magnetic badges in the nature of magnetic identifying cards]; fridge magnets; usb chargers [amend to: USB battery chargers]; frames for spectacles and sunglasses; sunglasses; sunglasses frames; cases for spectacles and sunglasses; cases for children's eyeglasses; eyewear; smartglasses; chains for spectacles and for sunglasses; application software [must indicate the function of the software, e.g., application software for organizing and compiling soccer statistics]; application software for smart phones [must indicate the function of the software, e.g., application software for smart phones for organizing and compiling soccer statistics]; computer programs for video and computer games; downloadable computer software applications [must indicate the function of the software, e.g., downloadable computer software applications for organizing and compiling soccer statistics]; education software [must indicate the function, e.g., educational software featuring instruction in soccer]; downloadable wallpapers for computers and phones; computer games entertainment software; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]; magnetically encoded gift cards
Class 14
Pins being jewelry
Class 16
paper and cardboard; printed matter [must indicate the types, e.g., printed matter, namely, paper and cardboard]; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials [must indicate the types, e.g., artists materials, namely, artists’ brushes, pencils and pens]; paintbrushes; typewriters and office requisites [must indicate the types, e.g., office requisites, namely, staplers]; instructional and teaching material [must indicate that the goods are printed and indicate the subject matter, e.g., printed instructional and teaching material in the field of soccer]; plastic materials for packaging [must indicate the types of materials, e.g., plastic film for packaging]; printers' type; printing blocks; advent calendars; figurines made from cardboard; figurines made from paper; graphic prints; bags made of paper for packaging; bags made of plastics for packaging; boxes made of cardboard; display boxes of cardboard; food wrappers; gift bags; gift boxes; gift cards [magnetically encoded gift cards are in Class 9, may amend to: non-magnetically encoded gift cards {ok in Class 16}]; gift wrapping paper; paper party bags; ball pens; attachments for pencils [must clarify the goods, e.g., attachments for pencils, namely, pencil ornaments]; colour pencils; fountain pens; felt pens; leather pencil cases; mechanical pencils; pen and pencil holders; pencil cups [amend to: pencil cups, namely, pencil holders]; pens; stamps [must clarify the types, could include toy stamps in Class 28, may amend to: impression stamps; marking stamps {ok in Class 16}]; cap erasers; rubber erasers; hole punches [amend to: paper hole punches]; office staplers; educational books [must indicate the subject matter, e.g., printed educational books in the field of soccer]; instructional and teaching materials [duplicate entry should be deleted or otherwise amended to: printed instructional and teaching materials in the field of soccer]; albums [must indicate the types, e.g., sticker and stamp albums]; photograph albums; scrapbooks; sticker albums; stamp albums; children's books; children's activity books; commemorative books [must indicate the field, e.g., commemorative books in the field of soccer]; printed pamphlets [must indicate the subject matter, e.g., printed pamphlets in the field of soccer]; metal money clips; handkerchiefs of paper; flags of paper; napkins made of paper for household use; paper bunting; paper cocktail parasols; paper table napkins; paper table linen; paper place mats; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]; adhesive materials in the nature of stickers; table runners of paper; printed holograms
Class 24
textiles and substitutes for textiles [must indicate the types, e.g., textiles, namely, fabrics for textile use]; bed covers; table covers [must indicate the material composition, may amend to: textile table covers]; adhesive fabric for application by heat; bedroom textile fabrics [must clarify the nature of the goods, may amend to: fabrics for textile use for use in bed linen]; fabrics for textile use; felt; furnishing fabrics; knitted fabrics; oilcloth; printed fabrics [must clarify the goods, may amend to: fabrics with printed patterns and designs thereon for use in textile applications, namely, the manufacture of apparel, upholstery, signage, flags, banners and wallpaper]; textiles made of cotton [must indicate the types, e.g., textiles made of cotton, namely, towels]; textiles made of synthetic materials [must indicate the types, e.g., textiles made of synthetic materials, namely, bed covers]; textiles treated with a flame resistant finish [must indicate the types, e.g., textiles treated with a flame resistant finish, namely, bed covers]; curtains for windows; curtains for showers; curtains and lace curtains of textiles or plastic; door curtains; draperies; adhesive labels (textile -) [remove parenthesis, amend to: textile adhesive labels]; adhesive materials in the form of stickers [these goods are properly in Class 16 and must be deleted from this class and moved to Class 16]; badges made of fabric material [must clarify the goods, e.g., badges made of fabric material, namely, labels of textile]; iron-on cloth labels; printed textile labels; bed linen and table linen; cloth coasters; kitchen linen; kitchen towels; table covers [duplicate entry should be deleted or amended to: table covers of textile]; table runners [could include table runners of paper in Class 16, may amend to: table runners not of paper {ok in Class 24}]; washing gloves; bed blankets; children's blankets; covers for cushions; covers for duvets; covers for pillows; blankets for household pets; blankets for outdoor use; sleeping bags; bathroom towels; beach towels; children's towels; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]
Class 25
Clothing [must indicate the types, e.g., clothing, namely, shirts, pants, hats]; footwear; headgear [must indicate types of headgear or amend to: headwear]; ankle socks; athletic footwear; athletic footwear for soccer; articles of clothing, footwear and headgear for babies and toddlers [must indicate the types of clothing and amend headgear to headwear, e.g., clothing, namely, tops, bottoms, footwear and headwear for babies and toddlers]; baby shoes; baby sandals; baby pajamas; baby boots; baseball caps; bathing suits; bath robes; bath slippers; belts; belts made of leather; blouses; bobble hats; boots; boots for sports; bow ties; children's socks; clothing for children [must indicate the types of clothing, e.g., clothing for children, namely, tops and bottoms]; coats; dresses; dressing gowns; ear muffs; fleece jackets; fleece bottoms; football boots; garters; gloves; hand warmers [amend to: clothing, namely, hand warmers]; hats; hooded tops [amend to: hooded tops as clothing]; jogging tops [amend to: jogging tops as clothing]; knitwear [must indicate the types, e.g., knitwear, namely, sweaters and scarves]; loungewear; mittens; nightwear; neck warmers [amend to: clothing, namely, neck warmers]; neckties; pajamas for adults; pajamas for children; paper hats [could include paper party hats in Class 28, may amend to: paper hats for use as clothing items {ok in Class 25}]; party hats [party hats are generally in Class 28, may amend to: party hats, namely, fashion hats worn as clothing {ok in Class 25}]; raincoats; sandals; scarfs; shirts; shoes for adults; shoes for children; shorts; short-sleeved t-shirts; short-sleeved sports shirts; skirts; slippers; socks; sports jerseys; sweaters; sweatpants; tops [amend to: tops as clothing]; trousers; underwear; vests; waterproof jackets; waterproof footwear; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]; all of the aforesaid goods being goods which are associated with sports mascots
Class 26
lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins [could include goods in multiple classes, e.g. jewelry pins in Class 14, may amend to: hair pins {ok in Class 26}] and needles; artificial flowers; appliqués; arm bands; armbands for holding sleeves; badges for wear, not of precious metal [must further clarify the badges, e.g., ornamental novelty badges for wear, not of precious metal]; belt buckles not of precious metal; boot laces; bows for clothing [must further clarify the goods, may amend to: bows for clothing, namely, ornamental bows of textile for decoration]; brooches for clothing; cloth patches for clothing; clasps for clothing; cyclists (trouser clips for -) [must remove parenthesis, may amend to: trouser clips for cyclists]; decoration of textile articles (heat adhesive patches for -) [must remove parenthesis, may amend to: heat adhesive patches for the decoration of textile articles]; embroidered emblems; fabric appliques; embroidered badges [must clarify the goods, e.g., ornamental embroidered novelty badges]; glass beads, other than for making jewelry; hat ornaments [must clarify that the goods are hat trimmings, may amend to: hat ornaments, namely, hat trimmings]; laces for footwear; name tags of textile for identifying clothing [must clarify the nature of the goods, e.g., name tags of textile for identifying clothing in the nature of embroidered patches for clothing]; needle cases; novelty buttons; sewing kits; thimbles (sewing -) [must remove parenthesis, e.g., sewing thimbles]; bands for the hair; barrettes; bows for the hair; clam clips for hair; decorative articles for the hair [must indicate the types of articles, e.g., decorative articles for the hair, namely, hair ribbons, hair bows]; elasticated hair bands; scrunchies [amend to: hair scrunchies]; artificial garlands and wreaths; artificial corsages; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]
Class 28
games and playthings [must indicate the types, e.g., games and playthings, namely, board games]; gymnastic and sporting articles [must indicate the types, e.g., gymnastic and sporting articles, namely, soccer balls]; decorations for christmas trees; action toys [must further clarify the toys, e.g., electronic action toys]; baby rattles incorporating teething rings; bags adapted for use with sporting equipment [must indicate that the goods are specially adapted, e.g., bags specially adapted for use with sporting equipment]; balls for sports; balls for games; bath toys; beach balls; bean bag dolls; bells for christmas trees; cases specially adapted for sports equipment; cat toys; chessboards; christmas crackers; christmas stockings; christmas tree decorations, except confectionery and electric christmas lights; clockwork toys; dog toys; dolls; dolls' clothes; dominoes; electronic educational game machines for children; finger puppets; gloves for soccer goalkeepers; hand pads for sports use; infant development toys; inflatable toys; jigsaw puzzles; marbles for games; memory games; mobiles [amend to: toy mobiles]; paper party hats; pet toys made of rope; plastic toys [must clarify the types of toys, e.g., plastic character toys]; playing cards; plush toys; pull toys; puppets; shin guards [must indicate that the goods are for athletic use, e.g., shin guards for athletic use]; skittles; snow globes; stuffed toys; talking toys; teddy bears; toy building blocks; toy figures; toy models; toys [must indicate the types of toys, e.g., plush toys]; video game apparatus [must further clarify the nature of the goods, e.g., video game consoles for use with an external display screen or monitor]; spools incorporating coiled string which rewind and return to the hand when thrown [must clarify the underlying nature of the goods, may amend to: spools incorporating coiled string which rewind and return to the hand when thrown, namely, yo-yos]; parts and fittings relating to all the aforesaid goods [must indicate that the parts and fittings are structural parts and fittings or otherwise indicate the specific types of parts and fittings, may amend to: structural parts and fittings relating to all the aforesaid goods]; paper party hats; toy stamps
Class 35
Writing of publicity texts; Arranging business competitions for entrepreneurs to compete for seed capital to finance business activities via the Internet; Production of television commercials; Business management in the field of sporting events
Class 41
Education [must indicate the form and subject matter, e.g., Education, namely, providing classes seminars and workshops in the field of soccer]; providing of training [must indicate the field of the training, e.g., providing training in the field of soccer]; entertainment [must indicate the types of entertainment services, e.g., providing entertainment information]; sporting and cultural activities [must indicate the types of activities, e.g., sporting and cultural activities, namely, organization of soccer games]; electronic publications (not downloadable) [must remove the parenthesis, and indicate the types of publications and their content, e.g., Providing non-downloadable electronic publications in the nature of magazines and journals in the field of soccer]; on-line publication of electronic books and journals; publication of educational texts; publication of fact sheets; publication of journals; publication of printed matter and printed publications; writing of texts [could include services in multiple classes, e.g., writing of publicity texts in Class 35, may amend to: writing of texts, namely, screenplay writing {ok in Class 41}]; arranging of competitions via the internet [could include services in multiple classes, e.g., arranging business competitions for entrepreneurs to compete for seed capital to finance business activities in Class 35, may amend to: arranging athletic competitions via the Internet{ok in Class 41}]; arranging of exhibitions for entertainment purposes; arranging of exhibitions for cultural purposes; arranging of exhibitions for cultural or educational purposes; arranging of exhibitions for training purposes [must clarify that these are educational exhibitions, e.g., arranging of educational exhibitions for training purposes]; arranging of seminars relating to business; competitions (organising of education -) [must remove parentheses and indicate the field of the competition, e.g., organizing educational competitions in the field of athletics]; conducting of exhibitions for educational purposes [must indicate the field or subject matter, e.g., conducting of exhibitions for educational purposes in the field of sports]; conducting of exhibitions for entertainment purposes [must indicate the type of entertainment, e.g., conducting entertainment exhibitions in the nature of soccer competitions]; organising competitions [must indicate the type of competitions, e.g., organizing basketball competitions]; organization of soccer competitions; audio, film, video and television recording services; audio recording and production; dvd and cd-rom film production [must indicate that this is not for advertising purposes, may amend to: DVD and CD-ROM film production, other than advertising films]; editing of video recordings; photography; production of audio programs; production of educational sound and video recordings; production of films for entertainment purposes; production of sporting events for radio [amend to: production of radio programs for sporting events]; production of sporting events for film [amend to: production of entertainment films featuring sporting events]; sound recording and video entertainment services [nature of the services is unclear, may amend to: production of sound and video recordings]; television, radio and film production [could include production of television commercials in Class 35, may amend to: television and radio program production and film production {ok in Class 41}]; advisory services relating to the organisation of sporting events; arranging of soccer games; arranging of sporting events [must indicate the type of sporting events, e.g., arranging of sporting events, namely, soccer competitions]; arranging of sports competitions [must indicate the type of sporting competitions, e.g., arranging of sports competitions, namely, soccer competitions]; coaching [must indicate the field of coaching, e.g., coaching services in the field of soccer]; coaching services for sporting activities; club sporting facilities (provision of -) [must remove parenthesis, e.g., providing club sports facilities]; conducting of soccer games; conducting of live sports events [must indicate the type of sports events, may amend to: conducting of live sports events, namely, soccer competitions]; education services relating to sports [must indicate the form of education, e.g., education services, namely, providing seminars and workshops in the field of sports]; organisation of tournaments [must indicate the type of tournaments, e.g., organization of soccer tournaments]; organising of sporting activities or competitions [must indicate the type of sporting activities, e.g., organizing of sporting activities and competitions in the field of soccer]; physical fitness education services [must indicate the form of education or otherwise amend to: providing physical fitness instruction services]; providing sports information; provision and management of sporting events [business management of sporting events is in Class 35, must indicate the type of sporting event, e.g., providing sporting events in the nature of soccer competitions {ok in Class 41}]; rental of stadium facilities; services for the organisation of sports events [must indicate the underlying services and specify the type of sports events, e.g., organization of soccer competitions]; sporting education services [must indicate the form of the education, e.g., Sports education services, namely, providing seminars and workshops in the field of soccer]; sports tuition, coaching and instruction [must clarify the nature of the services, e.g., sports tuition, coaching and instruction, namely, soccer coaching and soccer skills training services, and training in the field of soccer]; sports refereeing; lending of books and other publications; advisory services relating to training [must indicate the type of training, e.g., advisory services relating to soccer training]; advisory services relating to education [must clarify the form of education and the subject matter, e.g., advisory services relating to education in the nature of seminars and workshops in the field of soccer]; arranging and conducting of workshops [must indicate the type of workshops, e.g., arranging and conducting soccer workshops]; arranging and conducting of training workshops [must indicate the type of workshops, e.g., arranging and conducting of soccer training workshops]; arrangement of seminars for educational purposes; arranging of workshops [must indicate the subject matter, e.g., arranging workshops in the field of soccer]; coaching [must indicate the field, e.g., coaching in the field of soccer]; developing educational manuals [must indicate the subject matter and indicate that the services are for other, e.g., developing educational manuals for others in the field of soccer]; education academy services [must clarify the subject matter and nature of the services, e.g., education academy services, namely, providing soccer schools]; organising of business training; organisation of training seminars [must indicate the field, e.g., organization of soccer training seminars]; provision of facilities for education [amend to: providing facilities for educational training]; soccer instruction; sports education services [must indicate the form of education, e.g., sports education services, namely, providing classes in the field of soccer]; training of sports players [must clarify the field of the services, e.g., training of sports players, namely, providing training in the field of soccer]; training of referees [must clarify the field of the services, e.g., training of referees, namely, providing training of referees with respect to the rules of soccer]; vocational guidance; information, advisory and consultancy services relating to the aforesaid
Class 45
Writing of texts, namely, personal letter writing for others
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 REQUIREMENTS
(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 may be classified in more than seven classes; however, applicant submitted a fee(s) sufficient for only seven class(es). 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 Sections 1(b) and 44 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.
ADVISORY – CERTIFICATE OF FOREIGN REGISTRATION REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE TEAS PLUS / TEAS RF
/Blake Lovelace/
James Blake Lovelace
Examining Attorney
Law Office 119
(571)-270-1533
james.lovelace@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.
