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: 2/27/2019

 

 

 

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 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, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• PRIOR-FILED APPLICATION(S)
• IDENTIFICATION OF GOODS

 

PRIOR-FILED APPLICATION(S)

 

The filing date of pending U.S. Application Serial No. 88139795 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.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite or contains vague wording that requires clarifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

For the goods highlighted below, applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

 

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording does not appear to describe any goods and/or services in the International Class specified in the application.  See TMEP §1904.02(c)(iii). Applicant may respond by amending the highlighted wording to clarify the nature of the goods and/or services; however, any amendment to the identification must be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 

 

The word “headgear” in the identification of goods must be clarified because it is indefinite and too broad without further clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This word is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class. 

 

Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25).  Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”

 

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.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

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

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services are definite. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the functions of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content – or field specific, the content or field of use}.” In such a case, applicant must supply the required information within the brackets and remove the brackets from the identification.

 

 

Accordingly, applicant may adopt any or all of the following identification, if accurate (changes in bold):

 

 

 

·       CLASS 25: Clothing, namely, {specify specific type of clothing, e.g., pants}; footwear; headgear, namely, {specify specific type of goods in this class, e.g., hats}; sportswear, namely, {specify specific type of goods in this class, e.g.,  sports jackets}; shirts; pants; shorts; skirts; t-shirts; gilets; yoga pants; underwear; bras; sports bras; leggings; tights; vests; athletic tops and bottoms for running, yoga, exercise and sport; sweatshirts; sweat pants; hoodies; jackets; socks; hosiery; sweatbands; gloves; clothing, namely, aprons; ascots; clothing, namely, babies pants; neckerchiefs, namely, bandanas; bath robes; bath sandals; bath slippers; bathing caps; clothing, namely, bathing drawers; bathing suits; bathing trunks; beach clothes, namely, {specify specific type of goods in this class, e.g., beach cover-ups}; beach shoes; clothing, namely, belts; berets; bibs not of paper; necklets, namely, boas; lingerie, namely, bodices; boot uppers; boots for sports other than ski; braces as suspenders; breeches for sports; breeches for wear; camisoles; cap peaks; caps being headwear; chasubles; clothing for gymnastics, namely, {specifying specific type of clothing in this class, e.g., gymnastic shoes}; clothing of imitations of leather, namely, {specifying specific type of clothing in this class, e.g., belts made from imitation leather}; clothing of leather, namely, {specifying specific type of clothing in this class, e.g., leather pants}; coats; collar protectors strips for application to clothing collars; clothing, namely, collars; clothing, namely, combinations; corselets; corsets being underclothing; cuffs; cyclists clothing, namely, {specify specific type of clothing in this class, e.g., cyclists’ jerseys}; detachable collars; drawers as clothing; dress shields; dresses; dressing gowns; dungarees; clothing, namely, ear muffs; esparto shoes or sandals; fishing vests; fittings of metal for footwear, namely, {specify underlying nature of goods in this class, e.g., metal fittings for Japanese style wooden clogs}; football boots; football shoes; footmuffs not electronically heated in the nature of {specify common commercial name in this class}; fur stoles; furs being clothing; Clothing, namely, gabardines; gaiter straps; gaiters; galoshes; garters; girdles; gloves as clothing; gymnastic shoes; half-boots; skeletons, namely, hat frames; hats; headbands for clothing; headwear; heelpieces for footwear; heelpieces for stockings; heels; clothing, namely, hoods; hosiery; inner soles; clothing, namely, jackets; clothing, namely, jerseys; jumper dresses; pullovers, namely, jumpers; knitwear, namely, {indicate specific knitted clothing items, e.g., shirts, dresses, sweaters, etc.}; lace boots; clothing layettes; leg warmers; garments, namely, body linen; liveries; maniples; mantillas; masquerade costumes; miters in the nature of hats; mittens; clothing, namely, money belts; motorists clothing, namely, {specify specific type of clothing in this class, e.g., motorcycle jackets}; clothing, namely, muffs; neckties; non-slipping devices, namely, {specify common commercial name in this class, e.g., non-slip soles} for footwear; outerclothing, namely, {specify specific type of clothing in this class, e.g., coats}; overalls; overcoats; paper clothing, namely, {specify specific type of clothing in this class, e.g., paper hates for use as clothing items}; paper hats for use as clothing items; parkas; pelerines; pelisses; petticoats; pinafore dresses; pocket squares; pockets for clothing; ponchos; pullovers; pyjamas; ready-made linings being parts of clothing; sandals; saris; sarongs; sashes for wear; scarfs; scarves; shawls; shirt fronts; shirt yokes; shoes; short-sleeve shirts; shoulder wraps; shower caps; singlets; ski boots; ski gloves; ski pants; ski trousers; skirts; skorts; skull caps; sleep masks; slippers; slips being undergarments; smocks; sock suspenders; socks; soles for footwear; spats; sports jerseys; sports shoes; stocking suspenders; stockings; sweat –absorbent stockings; studs for football boots; clothing, namely, stuff jackets; suits; sun visors being headwear; suspenders; sweat-absorbent underclothing, namely, underwear; sweaters; sweatbands; swimsuits; undergarments, namely, teddies; tights; tips for footwear; togas; top hats; topcoats; trouser straps; trousers; turbans; underclothing; anti-sweat underclothing; underpants; underwear; anti-sweat underwear; uniforms; clothing, namely, veils; visors being headwear; waistcoats; waist bands; warm-up suits; waterproof clothing, namely, {specify specific type of clothing, e.g., boots}; welts for footwear; wet suits for water-skiing; wimples; wooden shoes; wristbands as clothing; casual wear, namely, {specify specific type of wear in this class}; sports clothing, namely, {specify specific type of clothing in this class}; outdoor and camping clothing, namely, {specify specific type of clothing in this class, e.g., outdoor gloves}; formal wear, namely, dresses, gowns, tuxedos, dinner jackets, trousers and footwear

 

 

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 GUIDELINES

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

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.  

 

 

 

/Philip Liu/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 109

(571) 272 - 6792

Philip.Liu@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 2/27/2019 FOR U.S. APPLICATION SERIAL NO. 88202439

 

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 2/27/2019 (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.