To: | Mistral International BV (docketdept@uspatent.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88312067 - M - 84076-2 |
Sent: | 5/16/2019 12:50:02 PM |
Sent As: | ECOM128@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88312067
MARK: M
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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: Mistral International BV
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 5/16/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On May 14, 2019, the trademark examining attorney and Mike Morris corresponded regarding the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Amendment of Identification of Goods
The wording in applicant’s identifications of goods in International Classes 009, 012, 022 and 028 are indefinite and must be amended. Additionally, “rashguards” is misclassified in Class 009 when it should be classified in Class 025. Applicant can either amend this wording to limit the goods to Class 009 or add Class 025. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. Applicant may adopt the following wording, if accurate:
· “Wakeboard helmet; sports helmets; swim goggles; sun glasses; eyeglass frames; prescription spectacles; spectacles; eye glass cords; spectacles and sunglasses cases; eyeglass cases and sunglass cases; spectacle lenses; optical goods, namely, ____ {list specific goods, using common commercial names, in International Class 009, e.g., optical lenses, optical tables, optical frames, etc.}; glasses for optical use or adapted to protect the eyes; optical glasses; spectacle chains; clothing for protection against accident or injury for water sports, namely, diving suits, life jackets and safety jackets; sports spectacles; safety spectacles for protection; life jackets; spectacle cases” in International Class 009;
· “Kayaks; canoes; rigid-inflatable boat; sail vehicles; watercrafts, namely, ____ { list specific goods, using common commercial names, in International Class 012, e.g., boats, paddle boats, etc.}; accessories for watercrafts, namely, ____ {list specific goods, using common commercial names, in International Class 012, e.g., canvas covers, planing hulls, etc.} in International Class 012;
· Sails, ropes and cables, not of metal; string, commercial nets, tents, awnings of textile” in International Class 022;
· “Rashguards; clothing for protection against the sun, low temperatures and moisture, namely, ____ {list specific goods, using common commercial names, in International Class 025, e.g., shirts, pants, etc.}” in International Class 025;
· “Paddles for stand-up paddle boarding; boards for stand-up paddle boarding; kites; kites for kitesurfing; parts and fittings for kitesurfing, wakeboarding and stand-up paddle boarding, namely, ____ {list specific goods, using common commercial names, in International Class 028, e.g., kite string, kite reels, paddleboard fins, etc. }; boards for kitesurfing; boards for wave boarding; gymnastic and sporting articles, except clothing, namely, ____ {list specific goods, using common commercial names, in International Class 028, e.g., gymnastic training stools, gymnastic vaulting horses, springboards, etc. }; surfboards; wind surfers; longboards; skateboards; parts and fittings for the aforesaid goods, namely, centreboards, skegs being fins, masts, booms, hand grips, toe rails for sailboats featuring low upright sides, clamping joints being connection clips and grip apparatus, pumps for inflatable stand-up paddle boards, leash lines for boards, safety lines for boards; sporting articles related to surfing, sailing and windsurfing included in this class, namely, ____ {list specific goods, using common commercial names, in International Class 028, e.g., surf fins, surf paddles, leashes used in conjunction with surfing, etc.}; swimming jackets; bags for surfboards; sail boards; surfboards” in International Class 028.
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.
Please be advised that applicant must comply with the multiple class requirements below if it wishes to add additional classes.
Multiple Class Requirements
The application identifies goods 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). The application identifies goods that are classified in at least seven classes; however, applicant submitted a fees sufficient for only six 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). 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.
Unsigned Application
The application was unsigned, resulting in the application not being properly verified. See TMEP §804. Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. The following statements must be verified:
That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Ojeyemi, Ashley
/Ashley C. Ojeyemi/
Examining Attorney
Law Office 128
(571)270-3399
ashley.ojeyemi@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.