Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 19, 2019

 

This application was approved for publication on July 15, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES:

• Requirement of Acceptable Identification and Classification
• Multiple-Class Application Requirements

 

REQUIREMENT OF ACCEPTABLE IDENTIFICATION AND CLASSIFICATION

 

This partial requirement applies only to the following goods, as is explained further below:  "compression sleeves for athletic use."

 

In the December 22, 2018 Office action, the examining attorney noted that applicant's identification entry of "compression sleeves for athletic use" was misclassified in International Class 25, and needed to be re-classified in International Class 10.  However, in reviewing applicant's June 21, 2019 response to that Office action, the examining attorney mistakenly approved the application for publication, despite the fact that applicant had failed to re-classify "compression sleeves for athletic use," as was required.

 

As a result, approval of the application has been withdrawn to address this issue (i.e., the continuing misclassification of "compression sleeves for athletic use").  See TMEP §706.01. 

 

Again, 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 Class 25 identification of goods and reclassifying "compression sleeves for athletic use" in Class 10.  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.

 

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 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 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, provided 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 trainers and athletes; entertainment services, namely, a continuing, pre-recorded audio and video program about sports and fitness training sessions accessible via web-based applications and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are 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.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

victor.cerda@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 19, 2019 for

U.S. Trademark Application Serial No. 88107726

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

victor.cerda@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 19, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”