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: 4/8/2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on March 22, 2019.

 

In a previous Office action dated December 18, 2018, the applicant was required to satisfy the following requirements:  Amend the identification of goods.

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Goods

 

 

IDENTIFICATION OF GOODS

 

The wording “Cycling wear” and “athletic clothing” in the identification of goods is indefinite and must be clarified because the specific articles of wear and clothing must be stated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “blanket sleeper” in the identification of goods is indefinite and must be clarified because infant nature of the sleeper must be specified.  Id.

 

The wording “nylons” in the identification of goods is indefinite and must be clarified because the clothing article made of nylon must be specified.  Id.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 025 for “jerseys” 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 and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 025: 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, coats, gloves, hats, jackets, beanies, scarves, fleece jackets, rain jackets; Snow pants; Snow suits; Sweaters; Aprons; Blanket infant sleepers; infant sleepers; Sleeping gowns; Pajama Sets comprised of pajama tops and bottoms; Pajama Tops; Pajama Bottoms; Robes; Sleep Pants and Shorts; Board Shorts; Boxer briefs, Briefs; Cycling wear, namely, {Specify articles of wear e.g. jerseys, cycling shoes, cycling shorts, etc.}; Hosiery, Socks; Sportswear, namely, jogging pants, sports shirts with short sleeves, track pants; Swim Trunks, Thermal Underwear, Tights, Nylon leggings, Underwear, Vests; Belts; Suspenders; Neck ties; Bow ties

 

See TMEP §§1402.01, 1402.03

 

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.

 

RESPONSE

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final requirement apply will be deleted from the application by Examiner’s Amendment:  “jerseys”, “cycling wear” “athletic clothing” “blanket sleepers” and “nylons”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods: 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, coats, gloves, hats, jackets, beanies, scarves, fleece jackets, rain jackets; Snow pants; Snow suits; Sweaters; Aprons; infant sleepers; Sleeping gowns; Pajama Sets comprised of pajama tops and bottoms; Pajama Tops; Pajama Bottoms; Robes; Sleep Pants and Shorts; Board Shorts; Boxer briefs, Briefs; Hosiery, Socks; Sportswear, namely, jogging pants, sports shirts with short sleeves, track pants; Swim Trunks, Thermal Underwear, Tights, Nylon leggings, Underwear, Vests; Belts; Suspenders; Neck ties; Bow ties

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

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.  

 

 

 

/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.