To: | Boards & More Holding GmbH (trademarkgroup@oliff.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88068271 - RHINO - 182659 |
Sent: | 2/19/2019 10:46:42 AM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88068271
MARK: RHINO
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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: Boards & More Holding GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/19/2019
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.
INTRODUCTION
This Office action is in response to applicant’s communication filed on February 5, 2019.
Applicant will note the following:
FOREIGN REGISTRATION IDENTIFICATION OF GOODS
In this case, the U.S. application identifies the goods as follows:
“Windsurfing sails,” in Class 22
“Kites; stunt kites and kites for kitesurfing and snowkiting; kiteboards; bags specially adapted for kiteboards; accessories for kites, namely, kite handles, kite lines, kite reels, kite string and kite tails,” in Class 28.
However, the foreign registration identifies the following goods:
“Kites (stunt kites and kites for kitesurfing and snowkiting); kiteboards; bags for kiteboards; accessories for all aforementioned goods.”
The goods identified as “windsurfing sails” in the U.S. application exceed the scope of goods in the foreign registration because no sails nor accessories for windsurfing are listed in the foreign registration. Thus, these goods in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
CLOSING
The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more. Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines. The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services. The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.
Please telephone the assigned trademark examining attorney with questions about this Office action.
/Tracy L. Fletcher/
Trademark Attorney, Law Office 115
U.S. Patent and Trademark Office
Direct Dial: (571) 272-9471
tracy.fletcher@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. All informal e-mail communications relevant to this application will be placed in the official application record. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
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.