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:  October 24, 2019

 

 

 

 

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  

This Office action is in response to applicant’s communication filed on September 25, 2019.

 

 

In the aforementioned communication, the applicant made arguments in favor of registration against the potential Section 2(d) refusal for the prior pending application cited and now registered.  

Upon careful review and consideration the examining attorney withdraws the potential Section 2(d) refusal. The applicant did not address the withdrawal of the improper consent statement.  Therefore this issue is maintained and continued. Upon further review a new issue has been determined with respect to the identification of goods as set forth below.

 

SUMMARY OF ISSUES

• Identification of Goods

 

 

IDENTIFICATION OF GOODS

 

 

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  Specifically, the wording “Baby layettes for clothing” must be clarified and amended to “Clothing layettes” to reflect recent changes in the identification manual as set forth below.  See TMEP §1402.01 §1402.03. 

 

 

Applicant should note that the wording in bold and/or bold ALL CAPS below shows the changes being proposed for the identification of goods.  Items with a strike through are to be deleted (e.g., toilet). When making its amendments, applicant should enter them in standard font, not bold ALL CAPS or with a strike through.

 

Applicant may adopt the following identification and classification of goods, if accurate:

 

International Class 025:  Aprons; Earmuffs; Footwear; Gloves; Hats; Hosiery; Knit bottoms; Knit tops; Masquerade costumes; Pants; Raincoats; Scarfs; Socks; Stockings; Swimsuits; Tights; Underwear; Vests; Baby layettes for clothing; CLOTHING LAYETTES; Bottoms as clothing; Girdles; Tops as clothing

 

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.

 

 

IMPROPER CONSENT STATEMENT- MAINTAINED AND CONTINUED

 

Applicant’s statement regarding the name, portrait or signature of a living individual identified in the mark will not be printed on any registration that may issue from this application.  The statement is unnecessary because the mark on its face would not reasonably be perceived as the name or likeness of a specific living individual.  TMEP §§813.01(b), 1206.05. 

In its response, applicant should request that the consent statement be withdrawn.

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.

 

/Shavell McPherson-Rayburn/

Shavell McPherson-Rayburn

Examining Attorney

Law Office 106

571-272-6121

Shavell.mcpherson-rayburn@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 October 24, 2019 for

U.S. Trademark Application Serial No. 88259266

 

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. 

 

 

/Shavell McPherson-Rayburn/

Shavell McPherson-Rayburn

Examining Attorney

Law Office 106

571-272-6121

Shavell.mcpherson-rayburn@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 October 24, 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.”