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: 12/22/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Advisory:  Prior-Filed Pending Application
• Requirement of Acceptable Identification and Classification
• Multiple-Class Application Requirements
• Additional Information Required Regarding Name & Consent of Individual 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, as is discussed further below, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

ADVISORY:  PRIOR-FILED PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87130151 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

REQUIREMENT OF ACCEPTABLE IDENTIFICATION AND CLASSIFICATION

 

Applicant seeks to register OBJ for the following goods and services in International Classes 18, 25, 28, 35, and 41:

 

Class 18:  Sports bags; backpacks; duffle bags; messenger bags; tote bags; gym bags; drawstring pouches; waist bags; kit bags; trunks (luggage) and suitcases; umbrellas; shoulder bags; accessories of leather and imitations of leather; leather straps

 

Class 25:  Footwear; football shoes; cleats for attachment to sports shoes; apparel, namely, jerseys, pants, shorts, t-shirts, shirts, sweatshirts, hooded sweatshirts, hoods, sweatpants, vests, tank tops, warm-up suits, jackets, anoraks, coats, underwear, belts, sports bras, socks, wrist bands, headbands, headwear, hats, caps, visors, sweatbands, sweaters, skirts, dresses, scarves, gloves; athletic uniforms; athletic tights; compression sleeves for athletic use; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, for jerseys or uniforms

 

Class 28:  Sports balls; footballs; football shoulder pads; football elbow pads; football knee pads; athletic supporters; machines for physical exercise; weights for lifting; ball weights for exercise; exercise ropes, namely, weighted ropes for strength training; bags specifically for carrying sports equipment; gloves for football

 

Class 35:  Retail store services and on-line retail store services featuring apparel, apparel accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods and equipment, bags, sports bags, sports and fitness products and accessories, near field communication (NFC) technology-enabled apparel and footwear, near field communication (NFC) tags, radio frequency identification (RFID) tags, computer application software for mobile phones and personal digital devices; advertising, business management, business administration, office functions, and marketing

 

Class 41:  Providing classes in the field of sports and fitness training; entertainment services, namely, live group fitness activities; entertainment services, namely, providing pre-recorded audio and video programs of sports and fitness training sessions via a website or computer application software; organizing sport events in the field of football; athletic and sports event services, namely, organizing, arranging, and conducting, contests, clinics, camps, tournaments, and exhibitions; education services, namely, providing mentoring in the field of football

 

Certain wording in the above-quoted identification is indefinite, though, and must be clarified for the reasons discussed below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 18

 

First, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

Also, the wording "accessories of leather and imitations of leather" is too broad and can encompass goods that are in more than one International Class.  For example, "leather wallets" are in International Class 18, but "bracelets made of leather" are in International Class 14.  Accordingly, applicant should further specify the nature of the goods being referenced in this identification entry, and a suggested amendment is offered below.   

 

International Class 25

 

Similarly, the wording "apparel, namely, jerseys, pants, shorts, t-shirts, shirts, sweatshirts, hooded sweatshirts, hoods, sweatpants, vests, tank tops, warm-up suits, jackets, anoraks, coats, underwear, belts, sports bras, socks, wrist bands, headbands, headwear, hats, caps, visors, sweatbands, sweaters, skirts, dresses, scarves, gloves" (bolded emphasis added) is too broad and can encompass goods that are in more than one International Class.  For example, "caps being headwear" and "visors being headwear" are in International Class 25.  However, protective apparel such as "baseball batting caps" (also called "batting helmets") are in International Class 9, as are "motorcycle helmet visors".  Accordingly, applicant should further specify the nature of the "caps" and "visors" being referenced, and a suggested amendment is offered below.

 

Please also note, applicant has classified "compression sleeves for athletic use" in International Class 25; however, the proper classification is International Class 10.  Therefore, applicant may respond by (1) adding International Class 10 to the application and reclassifying these goods in the proper international class, (2) deleting "compression sleeves for athletic use" from the application, or (3) deleting the remainder of the items in the identification for this class, and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

In addition, the wording "padded elbow compression sleeves sold as an integral component of athletic clothing, namely, for jerseys or uniforms" (bolded emphasis added) is indefinite, in that the phrasing "for jerseys or uniforms" is impermissibly open-ended, and fails to identify specific goods.  See TMEP §1402.03(a).  In an identification, an applicant must be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

International Class 28

 

The wording "bags specifically for carrying sports equipment" (bolded emphasis added) is indefinite and can encompass goods that are in more than one International Class.  For example, "bags for sports" are in International Class 18, but "bags specially adapted for sports equipment" are in International Class 28.  Accordingly, applicant should further specify the nature of the bags being referenced in this identification entry.  Since applicant already has the identification entry "sports bags" listed in Class 18, only the latter example is offered below as a suggested amendment in this class.

 

International Class 41

 

The wording "entertainment services, namely, live group fitness activities" is indefinite in that the precise nature of the Class 41 services being referenced is unclear.  For example, "entertainment services in the nature of live performances of group fitness activities by athletes" and "physical fitness training of groups" are distinct services.  

 

Also, the wording "entertainment services, namely, providing pre-recorded audio and video programs of sports and fitness training sessions via a website or computer application software" is indefinite and can encompass services that are in more than one International Class.  For example, "entertainment services, namely, a continuing, pre-recorded audio and video program about sports and fitness training accessible by means of web-based applications and computer application software" is in Class 41, but "broadcasting of video and audio programming via the internet" is in Class 38.   Accordingly, applicant should further specify the nature of the precise services being referenced, and a suggested amendment is offered below.

 

Also, the wording "athletic and sports event services, namely, organizing, arranging, and conducting, contests, clinics, camps, tournaments, and exhibitions" is indefinite in that the precise nature of the Class 41 services being referenced is unclear.  Accordingly, applicant should further specify the nature of the services being referenced.  A suggested amendment is offered below, demonstrating the requisite, further specificity.  

 

Applicant may adopt the following identification, if accurate: 

 

Class 10:  Compression sleeves for athletic use 

 

Class 18:  Sports bags; backpacks; duffle bags; messenger bags; tote bags; gym bags; drawstring pouches; waist bags; kit bags; trunks being luggage and suitcases; umbrellas; shoulder bags; accessories of leather and imitations of leather, namely, leather bags, leather wallets, imitation leather bags, and imitation leather wallets; leather straps

 

Class 25:  Footwear; football shoes; cleats for attachment to sports shoes; apparel, namely, jerseys, pants, shorts, t-shirts, shirts, sweatshirts, hooded sweatshirts, hoods, sweatpants, vests, tank tops, warm-up suits, jackets, anoraks, coats, underwear, belts, sports bras, socks, wrist bands, headbands, headwear, hats, caps being headwear, visors being headwear, sweatbands, sweaters, skirts, dresses, scarves, gloves; athletic uniforms; athletic tights; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jerseys and uniforms

 

Class 28:  Sports balls; footballs; football shoulder pads; football elbow pads; football knee pads; athletic supporters; machines for physical exercise; weights for lifting; ball weights for exercise; exercise ropes, namely, weighted ropes for strength training; bags specially adapted for carrying sports equipment; gloves for football

 

Class 35:  Retail store services and on-line retail store services featuring apparel, apparel accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods and equipment, bags, sports bags, sports and fitness products and accessories, near field communication (NFC) technology-enabled apparel and footwear, near field communication (NFC) tags, radio frequency identification (RFID) tags, computer application software for mobile phones and personal digital devices; advertising, business management, business administration, providing office functions, and marketing

 

Class 41:  Providing classes in the field of sports and fitness training; entertainment services in the nature of live group fitness activities, namely, live performances of group fitness activities by athletes; entertainment services, namely, a continuing, pre-recorded, audio and video program about sports and fitness training sessions accessible via web-based applications and computer application software; organizing sport events in the field of football; organizing, arranging, and conducting, football-related social entertainment events in the nature of contests, clinics, camps, tournaments, and exhibitions; education services, namely, providing mentoring in the field of football

 

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).

 

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).  The application identifies goods and/or services that could be classified in at least 6 classes; however, applicant submitted fees sufficient for only 5 classes.  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).

 

See 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.

 

ADDITIONAL INFORMATION REQUIRED REGARDING NAME & CONSENT OF INDIVIDUAL

 

Applicant must clarify whether the name "OBJ" in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)       The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “OBJ identifies Odell Beckham Jr., a living individual whose consent is of record.”

 

(2)       A written consent, personally signed by the named individual(s), as follows:  “I, Odell Beckham Jr., consent to the use and registration of my name, "OBJ", as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

victor.cerda@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 12/22/2018 FOR U.S. APPLICATION SERIAL NO. 88107726

 

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 12/22/2018 (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.