Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 03, 2019

 

This Office action is in response to applicant’s communication filed on September 11, 2019.

 

On March 11, 2019, an Office Action on this application issued raising the following issues:

1)     requirement for an acceptable identification of goods restricted to Classes paid.

 

Applicant’s amended identification of goods remains unacceptable in part.

 

The refusal under requirement for an acceptably restricted identification is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

 

IDENTIFICATION OF GOODS

 

The identification of goods as amended currently in Class 9 remains indefinite as specified further below and must be clarified.  See TMEP §1402.01.  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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

The following recitations remain unacceptable:

 

• Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer's swing

The wording “aids” and “articles” in International Class 9 must be clarified because it is indefinite as it does not specify the name or the type of the aid.  See TMEP §§1402.01, 1402.03.  In addition, this identification is too broad and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “Golf training equipment, namely, a motorized golf chipping practice aid” is in International Class 28 and “Golf scopes” are in Class 9.  The means by which the goods ‘attach’ to a club is not determinative of classification or of function.  For Class 9 goods, the goods must be electronic or optical, e.g., in the nature of a swing analyzer, and if ‘mechanical’ in nature in Class 28, must specify the function.  The wording “tangible article” is meaningless to define the nature of the golf training aid.

 

See, in the Manual, the DELETED entry for

 

028      Golf training apparatus, namely, devices used to help groove a repetitive putting stroke  D         02/28/2013      GOODS          

 

with the Note explaining:

 

On 02-28-2013, this 12-24-2009 entry was deleted because the description is overbroad and may include goods in Class 9 or Class 28. General descriptions of sports training devices are indefinite and must provide sufficient information about the function and/or purpose of the goods to support classification in Class 9 as electronic or computer software-based training apparatus or Class 28 as sports equipment.

 

Therefore, applicant must amend this wording to specify either (1) the common generic name of each piece of equipment or (2) the nature and purpose or function of the equipment.  See TMEP §§1402.01, 1402.03.

 

Applicant may adopt the following wording, if accurate:

 

Golf training aids, namely, electronic angular momentum sensors with transmitters designed to attach to a golfer and/or golf club and improve a golfer's swing and that relay data to a computer for analysis, in Class 9;

 

Apparel, namely, T-shirts, shirts, hats, caps, sweatshirts, pants, sweat suits, hoodies and socks; in Class 25;

 

Golf training aids, namely, weights designed to attach to a golfer and/or golf club and improve a golfer's swing, in Class 28.

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.\

 

The requirement is thus made FINAL.

 

MULTIPLE CLASSES -- INSUFFICIENT FEES

 

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 fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 2 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).

 

Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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.

 

The requirement is thus made FINAL.

 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

  

/Hanno Rittner/

Examining Attorney

Law Office 119

hanno.rittner@uspto.gov

571-272-7188

 

 

 

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 October 03, 2019 for

U.S. Trademark Application Serial No. 88215375

 

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. 

 

 

  

/Hanno Rittner/

Examining Attorney

Law Office 119

hanno.rittner@uspto.gov

571-272-7188

 

 

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 October 03, 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.”