To: | Vans, Inc. (trademarks@sandsip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88218336 - V - 990.423.11 |
Sent: | 4/26/2019 1:44:29 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88218336
MARK: V
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Vans, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION - Partial
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: 4/26/2019
THIS IS A FINAL ACTION.
PLEASE NOTE: Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action. Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
This Office action is in response to applicant’s communication filed on April 9, 2019.
The applicant (1) submitted a signed affidavit in support of the application; (2) amended the identification of goods in International Class 9; (3) amended the identification of goods in International Class 18; (4) amended the recitation of services in International Class 35; and (5) amended the recitation of services in International Class 41.
Nos. (1), (2) and (4) are acceptable. Specifically, the amended identifications in International Class 9 and 35 have both been entered in the application record.
Advisory – Identification in International Class 18 – Duplicative Entry Deleted
Per the advisory in the initial Office action, the identification of goods in International Class 18 is amended to delete the duplicative entry for “shoulder bags” and to read as follows: All-purpose carrying bags, purses, shoulder bags, hand bags, beach bags, messenger bags, overnight bags, and backpacks; Wallets.
See generally TMEP §§1402.01, 1402.01(a).
Final Requirement – Recitation of Services in International Class 41
The wording “Educational services, namely, instructional videos in the field of action sports” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable instructional videos or instructional videos record on computer media both of which are properly classified in International Class 9.[1]
Applicant may substitute the following wording, if accurate: Educational services, namely, providing temporary use of non-downloadable instructional videos in the field of action sports.
The applicant may adopt the following recitation of services in International Class 41, if accurate: Entertainment services in the nature of presenting live musical performances and conducting of sports competitions; Providing sports facilities for action sports; Entertainment services, namely, production and distribution of on-line television programs featuring sports, music, and news; Educational services, namely, providing temporary use of non-downloadable instructional videos in the field of action sports; Organizing music, art, and sports competitions; Educational services, namely, conducting classes, workshops, camps, and clinics in the fields of music, art, and action sports.
(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).
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.
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.
Proper Response to Final Refusal – Potential for Partial Abandonment
The application will then proceed in International Classes 9, 18 and 35 in their entireties as well as the remaining services in International Class 41.
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.
/Julie Watson/
Trademark Examining Attorney
Law Office 109
571-272-9236
julie.watson@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.
[1] Please note that amending the application to place these instructional videos in International Class 9 would be outside of the scope of the original recitation of education services in International Class 41.