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:  August 26, 2019

 

This Office action is in response to applicant’s communication filed on August 2, 2019.

 

In the prior Office action of March 24, 2019, applicant was required to amend the identification of services for International Class 35, and to add international classes to the application if appropriate.

 

The trademark examining attorney has considered applicant’s response and proposed amendment, but finds they do not satisfy the requirements.  Therefore, for the reasons below, the requirements to amend the Class 35 identification of services and add international classes, if appropriate, are maintained and continued.

 

Please also note the new requirements concerning U.S. attorney bar information and attestation below.

 

1.)     REQUIREMENT TO AMEND INTERNATIONAL CLASS 35 IDENTIFICATION OF SERVICES – CONTINUED

 

The original identification of services for International Class 35 read as follows: 

 

“Retail store services and online retail store services featuring bicycles, bicycle parts, bicycle accessories, apparel for bicycling, bicycle helmets, bicycle eye ware, bicycle shoes, snowboards, snowboard parts, snowboard accessories, apparel for snowboarding, snowboard boots, snowboard gloves, snowboard helmets, snowboard goggles, and instruction for snowboarding, skateboards, skateboard parts, skateboard accessories, skateboard helmets, snow skis, snow ski boots, snow ski bindings, ski helmets, ski goggles, men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves and socks; equipment for indoor cycling, stationary bicycles, electronic monitors, food and liquid storage equipment, food, health drinks, drinking bottles, clothing and informational material regarding sports training”

 

Applicant was required to clarify the identification of services by indicating whether all of the listed items were items carried by the retail stores and online retail stores, or whether the items following the semicolons were separate goods belonging in separate international classes.  Applicant was required to either amend the identification of services to change the semicolons to commas to indicate all items listed were found in the retail stores and online retail stores, or to separate-out the goods by international class and follow the instructions and requirements for adding international classes to the application.

 

Applicant has responded by amending the identification of services and the proposed amendment to the identification of services for International Class 35 reads:

 

“Retail store services and online retail store services featuring bicycles, bicycle parts, bicycle accessories, apparel for bicycling, bicycle helmets, bicycle eye ware and bicycle shoes; snowboards, snowboard parts, snowboard accessories, apparel for snowboarding, snowboard boots, snowboard gloves, snowboard helmets, snowboard goggles, and instruction materials for snowboarding; skateboards, skateboard parts, skateboard accessories and skateboard helmets; snow skis, snow ski boots, snow ski bindings, ski helmets and ski goggles; men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel, vests, tights and pants; equipment for indoor cycling, namely, stationary bicycles and electronic monitors; food and liquid storage equipment; food; health drinks; drinking bottles; and informational material regarding sports training”

 

The proposed amendment is unacceptable as still indefinite for the following reasons:

 

As stated in the prior Office action, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

In the present case, applicant again uses semicolons in the identification of services in such a way as to call into question the nature of the services/goods.  That is, as the amended identification is set forth by applicant, it is unclear whether the “snow skis, snow ski boots, snow ski bindings, ski helmets and ski goggles; men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel, vests, tights and pants; equipment for indoor cycling, namely, stationary bicycles and electronic monitors; food and liquid storage equipment; food; health drinks; drinking bottles; and informational material regarding sports training” are separate goods, or are items featured in applicant’s retail store services and online retail store services. 

 

As stated in the prior Office action, applicant must clarify the wording “snow skis, snow ski boots, snow ski bindings, ski helmets and ski goggles; men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel, vests, tights and pants; equipment for indoor cycling, namely, stationary bicycles and electronic monitors; food and liquid storage equipment; food; health drinks; drinking bottles; and informational material regarding sports training” in the identification to indicate whether these are items featured in applicant’s retail stores and online retail stores, or whether they are separate goods which are classified other international classes, and amend those goods accordingly.  For example, the following international classes of goods are identified here:

 

• International Class 28 – snow skis, snow ski bindings, equipment for indoor cycling, namely, stationary bicycles and electronic monitors [amend to: “snow skis; snow ski bindings; equipment for indoor cycling, namely, stationary bicycles and electronic monitors sold as a unit” in Class 28];

 

• International Class 25 - snow ski boots, men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel, vests, tights and pants [amend to: “snow ski boots; men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel comprising {specify each item of apparel, e.g., long underwear}, vests, tights and pants” in Class 25];

 

• International Class 9 – ski helmets and ski goggles

 

• International Class 11, 16 or 21 -  food and liquid storage equipment, drinking bottles [amend to, e.g.: “food and liquid storage equipment comprising temperature controlled, refrigerated or heated mobile units for the storage of food products” in Class 11”; and “drinking bottles for sports” in Class 21];

 

• International Class 29, 30, 31 or 32 – food, health drinks [amend to, e.g.: “health drinks, namely, energy drinks” in Class 32; and “food, namely, {amend to specify the common commercial name of each food item in Class 29, 30, 31 or 32}”];

 

• International Class 9, 16 or 41 – informational material regarding sports training [amend to “printed” in Class 16; or “downloadable” in Class 9; or “online non-downloadable” in Class 41].

 

[See requirements below for adding international classes to the application.]

 

However, if the items above are not separate goods but are instead only items featured in the retail stores and online retail stores, applicant must amend the identification of services to replace the semicolons with commas – and may substitute the following identification of services for International Class 35, if accurate: 

 

Retail store services and online retail store services featuring bicycles, bicycle parts, bicycle accessories, apparel for bicycling, bicycle helmets, bicycle eye ware and bicycle shoes; snowboards, snowboard parts, snowboard accessories, apparel for snowboarding, snowboard boots, snowboard gloves, snowboard helmets, snowboard goggles, and instruction materials for snowboarding, skateboards, skateboard parts, skateboard accessories and skateboard helmets, snow skis, snow ski boots, snow ski bindings, ski helmets and ski goggles, men's, women's and children's clothing, namely, winter jackets, snow pants, winter hats, winter gloves, socks, shorts, jerseys, cycling gloves, base layer apparel, vests, tights and pants, equipment for indoor cycling, namely, stationary bicycles and electronic monitors, food and liquid storage equipment, food, health drinks, drinking bottles, and informational material regarding sports training

 

NOTE:  Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

ALSO NOTE:  Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

2.)     REQUIREMENTS FOR ADDING INTERNATIONAL CLASSES – CONTINUED

 

As stated in the prior Office action, the application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in possibly twelve international classes; however, applicant submitted a fee(s) sufficient for only two class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for International Classes 35 and 37 only; and applicant needs a specimen for any other added international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

3.)     NEW REQUIREMENT – U.S. ATTORNEY BAR INFORMATION AND ATTESTATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

 

RESPONSE GUIDELINES

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  

 

 

/Martha Santomartino/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

(571) 272-9416

martha.santomartino@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 August 26, 2019 for

U.S. Trademark Application Serial No. 88265377

 

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. 

 

 

/Martha Santomartino/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

(571) 272-9416

martha.santomartino@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 August 26, 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.”