UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/20/2019

 

 

 

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 20, 2019, the trademark examining attorney and CHRISTOPHER J. PALERMO discussed 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.

 

 

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.  

 

SUMMARY OF ISSUES:

• Description of the Mark
• Identification of Goods and Services
• Multiple Classes

 

DESCRIPTION OF THE MARK

 

Applicant must amend the description of the mark because it is incomplete.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  In this case, the drawing of the mark is not in standard characters.

 

The following description is suggested, if accurate:

 

The mark consists of the stylized letters “GV” overlapping, with a sword pointed downward behind the overlapping letters.

 

IDENTIFICATION OF GOODS AND SERVICES

 

 

The identification of goods and services is unacceptable and must be clarified because some of the terms are indefinite and/or misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, in Class 25, the wording “onesies” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  For example, see the attached U.S. Registration No(s). 5413074, 3488401, 2549557, and 1292981. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace “infant onesies” with the following, if appropriate:  “infant one piece garments.”

 

See TMEP §§1402.01, 1402.01(e).

 

The “downloadable goods” must be listed in Class 9, with the subject matter of the downloadable goods specified, and the form of the “lesson plans” specified as well.

 

In Class 16, the exact nature of the “book sleeves” and “wax stamps” must be specified, and the “coasters” will be in different classes, depending on what they are made of.  The applicant must list the material each coaster is made of and list the coasters in the correct class.  For example, “paper coasters are in Class 16, “leather and plastic coasters” are in Class 21, and “fabric coasters” are in Class 24.

 

In Class 18, the “makeup bags and pouches must be specified as” “makeup bags sold empty, makeup pouches sold empty”.  Also, the exact nature of the “pencil bags” and all of the “pouches” must be specified, and some of the pouches are misclassified.  For example, “pencil bags being pencil cases; Pencil pouches being pencil cases” are acceptable terms, but must be moved to Class 16.  “Tote bags and pouches” may be amended to “Tote bags and fabric pouches for use with the tote bags” in Class 18, since fabric pouches are classified in Class 18.  “Messenger bags and pouches may be amended to “Messenger bags and fabric pouches for use with the tote bags” since fabric pouches are classified in Class 18. 

 

In Class 41, the subject matter of the “information” must be specified, and to be in Class 41, the subject matter must be a type classified in Class 41, for example, “entertainment information”. 

 

In Class 41, the “quizzes” must be specified as “online non-downloadable” and the subject matter of the quizzes must be specified.

 

In Class 41, the subject matter of the “non-downloadable online videos” must be specified.

 

In Class 41, the “downloadable” items are misclassified.  As noted above, the downloadable items must be moved to Class 9.  The “downloadable goods” must be listed in Class 9, with the subject matter of the downloadable goods specified, and the form of the “lesson plans” specified as well.

 

 

The suggested identification of goods and services below shows the level of specificity required, subject matters for items where subject matter is required, and proper classification of the goods and services.

 

SUGGESTED IDENTIFICATION OF GOODSAND SERVICES

 

Applicant may substitute the following wording, if accurate: 

 

IC 009: Downloadable images, maps, and lesson plans in the nature of teacher guides, all in the field of fantasy stories relating to imaginary worlds

 

IC 016: Printed matter and paper goods, namely, art prints, book sleeves in the nature of book covers, bookmarks, bookends, bookplates, cases specially adapted to carry books, paper coasters, greeting cards, maps, postcards, posters, stickers, tarot cards, and temporary tattoo transfers; wax stamp, namely, sealing stamp intended for use with wax; wooden goods, namely, bookmarks; Leather goods, namely, bookmarks

 

IC 018: Carrying bags and pouches, namely, backpacks, makeup bags sold empty, makeup pouches sold empty, tote bags and fabric pouches for use with the tote bags, messenger bags and fabric pouches for use with the messenger bags; umbrellas

 

IC 021: Leather coasters; Plastic coasters

 

IC 024: Fabric coasters

 

IC 025: Apparel for women, men, and children, namely, aprons, cuffs, fingerless gloves, hats, and infant one-piece garments

 

IC 041: Providing a website featuring entertainment information about books, characters, and imaginary worlds; Providing online non-downloadable quizzes for entertainment purposes in the field of fantasy stories relating to imaginary worlds; Providing non-downloadable online videos in the field of fantasy stories relating to imaginary worlds

 

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.

 

 

MULTIPLE CLASSES

 

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).  The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted fees sufficient for only four 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.

 

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. 

 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/20/2019 FOR U.S. APPLICATION SERIAL NO. 88334830

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.