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:  July 30, 2019

 This Office action is supplemental to and supersedes the previous Office action issued on January 2, 2019, in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, entries in Class 9 of the identification of goods is indefinite and amendment is required.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated January 2, 2019. The issue(s) raised in the previous January 2, 2019, Office action is/are as follow and is/are maintained: amend the identification of goods for Class 18. 

 

Further, the following requirements have been satisfied: definite identification provided for Class 25 and consent to use the name of a living individual has been provided. See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• Identification Of Goods – Amendment Required
• Multiple-Class Application Requirements

 

Applicant must respond to all issues raised in this Office action and the previous January 2, 2019, Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

IDENTIFICATION OF GOODS

 

Certain wording in the identification of goods for International Classes 9 and 18 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Further explanation is provided below.

 

Furthermore, certain wording the identification of goods is indefinite and must be clarified because it is unclear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Further explanation is given below

 

International Class 9

Original	Issue	Suggestion
magnetic data carriers;	Indefinite unclear the nature and/or subject matter of the goods	Blank magnetic data carriers;
recording discs;	Indefinite unclear the nature and/or subject matter of the goods	Blank recording discs;
optical apparatus and instruments;	Indefinite unclear the nature and/or subject matter of the goods	Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography;
spectacles;	Okay
sunglasses;	Okay
fashion spectacles;	Okay
goggles;	Indefinite unclear the nature and/or subject matter of the goods	Safety goggles;
lenses;	Indefinite and overbroad goods fall into more than one class	Eyeglass lenses; in Class 9. Intraocular lenses; in Class 10.
lenses for spectacles, goggles and masks;	Indefinite unclear the nature and/or subject matter of the goods	Lenses for spectacles, safety goggles and Protective face masks not for medical purposes;
spectacle frames;	Okay
cases for spectacles, sunglasses, goggles and masks;	Indefinite unclear the nature and/or subject matter of the goods	Cases for spectacles, safety goggles and Protective face masks not for medical purposes;
chains for spectacles, sunglasses, goggles and masks;	Indefinite unclear the nature and/or subject matter of the goods	Chains for spectacles, safety goggles and Protective face masks not for medical purposes;
headphones;	Okay
audio players;	Indefinite unclear the nature and/or subject matter of the goods	Digital audio players;
portable audio players;	Okay
video players;	Indefinite unclear the nature and/or subject matter of the goods	Video disc players;
portable video players;	Indefinite unclear the nature and/or subject matter of the goods	Portable digital video players;
media players;	Okay
portable media players;	Okay
DVD players;	Okay
portable DVD players;	Okay
CD players;	Okay
portable CD players;	Okay
MP3 players;	Okay
MP4 players;	Okay
protective carrying cases for portable audio, video, media, DVD, CD, MP3 and MP4 players;	Okay
mobile phones;	Okay
smart phones;	Okay
protective cases, carriers and holders for mobile and smart phones;	Okay
headsets for mobile and smart phones;	Okay
speakers;	Indefinite unclear the nature and/or subject matter of the goods	Audio speakers;
audio equipment;	Indefinite unclear the nature and/or subject matter of the goods	Audio equipment, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings;
radios;	Okay
digital photo frames;	Okay
accessories and replacement parts for mobile phones, smart phones and computers;	Okay
helmets;	Indefinite and overbroad goods fall into more than one class	Headgear being protective helmets; in Class 9. Helmets for dolls; in Class 28
sports helmets;	Okay
parts and fittings for all of the aforesaid goods	Okay

 

Applicant may adopt the following identification, if accurate:

 

“Blank magnetic data carriers; Blank recording discs; Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; spectacles; sunglasses; fashion spectacles; Safety goggles; Eyeglass lenses; Lenses for spectacles, safety goggles and Protective face masks not for medical purposes; spectacle frames; Cases for spectacles, safety goggles and Protective face masks not for medical purposes; Chains for spectacles, safety goggles and Protective face masks not for medical purposes; headphones; Digital audio players; portable audio players; Video disc players; Portable digital video players; media players; portable media players; DVD players; portable DVD players; CD players; portable CD players; MP3 players; MP4 players; protective carrying cases for portable audio, video, media, DVD, CD, MP3 and MP4 players; mobile phones; smart phones; protective cases, carriers and holders for mobile and smart phones; headsets for mobile and smart phones; Audio speakers; Audio equipment, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; radios; digital photo frames; accessories and replacement parts for mobile phones, smart phones and computers; Headgear being protective helmets; sports helmets; parts and fittings for all of the aforesaid goods.”

 

International Class 18

Original	Issue	Suggestion
leather and imitations of leather and goods made from these materials, namely, shoulder bags, backpacks, book bags, sports bags, purses, cosmetic bags sold empty, evening bags, weekend bags, athletics bags, travelling bags;	Okay
bags, namely, travel bags;	Okay
handbags;	Okay
wallets;	Okay
purses;	Okay
luggage, cases;	Indefinite and overbroad goods fall into more than one class	Carrying cases for cell phones; in Class 9. Luggage; Cases, namely, travel cases; in Class 18.
suit bags	Okay

 

Applicant may adopt the following identification, if accurate:

 

“Leather and imitations of leather and goods made from these materials, namely, shoulder bags, backpacks, book bags, sports bags, purses, cosmetic bags sold empty, evening bags, weekend bags, athletics bags, travelling bags; Bags, namely, travel bags; Handbags; Wallets; Purses; Luggage; Cases, namely, travel cases; Suit bags.”

 

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 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 are classified in at least five (5) classes; however, applicant submitted a fee(s) sufficient for only three (3) 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  

 

 

/Lauren Dantzler/

Examining Attorney

Law Office 122

(571) 272-7348

Lauren.dantzler@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 July 30, 2019 for

U.S. Trademark Application Serial No. 88127431

 

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. 

 

 

/Lauren Dantzler/

Examining Attorney

Law Office 122

(571) 272-7348

Lauren.dantzler@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 July 30, 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.”