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: 12/18/2018

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

• Identification of Goods
• Partial Abandonment Advisory

 

 

IDENTIFICATION OF GOODS

 

Some of the wording in the identification of goods is indefinite and must be clarified because applicant must provide clarifying information about the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 25 for “Pajamas; Jackets; Sweatshirts; Skirts; Shorts; Pajama Bottoms; Collared shirts; Coveralls; Dresses; Girls’ bathing suits; Jerseys; Leggings; Outerwear; Overalls; Tank tops.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, with changes in bold, if accurate:

 

 

Class 25:         “Clothing for toddlers and children, namely, t-shirts, sweatshirts, pajamas, jackets, shirts, pants, jumpers; Coats; Dresses; Hats; Hats for toddlers and children; Nightgowns; Pajama bottoms; Pajamas; Pants; Scarves; Shirts; Shirts and short-sleeved shirts; Shirts for toddlers and children; Skirts; Skirts and dresses; Slipper socks; Slippers; Shorts; Leggings; Baseball caps and hats; Beachwear; Body suits for Women; Body suits for Children; Bottoms as clothing; Bottoms as clothing for Men; Bottoms as clothing for Women; Bottoms as clothing for Children; Denims; Fingerless gloves as clothing; Fleece tops; Graphic t-shirts; Head wraps; Headbands for clothing; Headwear for Men; Headwear for Women; Headwear for Children; Henley shirts; Hooded sweat shirts; Hoodies; Jackets; Jerseys; Jumper dresses; Knit skirts; Knit tops; Long-sleeved shirts; Lounge pants; Loungewear; Night shirts; Polo shirts; Polo knit tops; Rain coats; Long-sleeved t-shirts; Sleep shirts; Sleepwear; Sports caps and hats; Stretch pants; Sweatpants; Sweatshirts; Swimwear; Tank tops; Yoga pants; Coveralls; Collared Shirts; Overalls; Girl's Bathing Suits; Outerwear, namely, {specify particular clothing items, e.g., coats, hats, etc.}; Snow pants; Snow suits; Sweaters; Skirts; Shorts; Aprons; Blanket sleepers; Sleeping gowns; Pajama Bottoms; Pajama Sets; Pajama Tops; Robes; Sleep Pants and Shorts; Board Shorts; Boxers, Briefs, Collared Shirt, Coveralls, Cycling wear, Dresses, Girl's Bathing Suits, Hosiery, Jerseys, Leggings, Outerwear, Overalls, Socks, Sportswear, namely, {indicate particular clothing items}; Swim Trunks, Tank tops, Thermal Underwear, Tights, Nylons, Underwear, Vests; Belts; Suspenders; Neck ties; Bow ties.”

 

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 or add goods 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 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 will further limit scope, and once goods 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.

 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 25 will be deleted from the application: “Pajamas; Jackets; Sweatshirts; Skirts; Shorts; Pajama Bottoms; Collared shirts; Coveralls; Dresses; Girls’ bathing suits; Jerseys; Leggings; Outerwear; Overalls; Tank tops; Outerwear; Sportswear.” The application will then proceed with the remaining goods in International Class 25 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

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.  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.  

 

 

 

/Jason R. Nehmer/

Examining Attorney

Law Office 121

(571) 270-5303

jason.nehmer@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.