UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 5/6/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues:

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods Requirement
• Multiple-Class Application Requirements

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5556799.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is TROUBLEMAKERS, in standard characters, for use on:

 

Class 28: Toys, games, playthings, and sporting equipment, namely, all of the following: party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; bubble toys, namely, bubble making wand and edible solution sets; water toys; games involving using bubble solution and bubble blowing toys; parlor games; play balls; toy game balls and accessories therefor; toy cannons; toy bouncers, namely, sit-down bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, bounce balls; inflatable pit balls for recreational use; inflatable hopper balls for recreational use, action figure toys, play sets for actions figures; party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble making toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; card games; figurines in the nature of modeled plastic toy figurines; molded plastic character toys with connectable and/or interchangeable elements; collectible toy figurines; collectable toy animal figurines; collectible bath toys;children's dress-up fashion accessories in the nature of toy purses, toy shoes, and toy hats; toy action figures; plastic toy characters; collectible plastic toy characters; collectable bendable toy characters; accessories for modeled plastic toy figurines; accessories for toy plastic characters; articles of clothing for toys, namely, outfits for toys; pouches for toys, namely, cases for toy vehicles; puppets; puzzles; packaged amusement and educational games, namely, electronic educational games in the nature of hand-held units for playing educational electronic games; electronic educational game machines; toy environments in the nature of toy environments for use with toy figurines and toy environments for use with toy characters and figurine play pieces, namely, toy buildings, toy vehicles, toy building structures, toy construction sets; play sets for toy figurines, play sets for toy characters; doll costumes, namely, play toy costumes; fantasy character toys; toy action figures and accessories therefor; play toys and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; inflatable elastomeric toys in the shape of animals, insects, figurines, and creatures, and other recognizable object shapes when not in a stressed or stretched state; and elastomeric balls for play; plush toys, plush stuffed toys, plush dolls and plush covered balls; action skill games; hand-held, non-electronic skill games; tossing disc toys; toy projectiles and accessories therefor; action figures, dolls and figurines, rubber toys in the shape of food and household goods;, toy watches and toy jewelry; toy holiday ornaments of rubber; balls for play, namely, balls for juggling, games, and sports; toy animals; toy insects; inflatable thin rubber toys and rubber-like toys; rubber character toys; toy dice; toy dolls; elastic toys, namely, rubber band toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy guns and toy ammunition, toy dart guns, dart games and darts; toy weaponry, namely, hand weapons in the nature of firearms, cap guns, handheld projectile-launchers, sling-shots, and ammunition for sling-shots; toy guns; toy dart guns; toy currency, toy make-up and toy make-up accessories; dolls; toy coin banks; toy purses and toy jewelry; bath toys; sand toys, toy phones and toy personal digital assistants; fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories, light-up toys for projecting images, bubble toys, namely, bubble making wand and solution sets, ride-on toys; toy purses, toy keychains, toy coins and currency, walkabout toys, namely, wind-up walking toys; toy target shooting sets containing toy weapons and targets sold together as a kit; fitted covers specially adapted for toy cars, airplanes, and boats; role-playing toys in the nature of play sets for children to imitate real life situations and occupations, and role-playing games; toy weapons; toy swords, toy guns and toy darts; toy eyeglasses; bubble making toys and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses and pens/markers, all packaged and sold as a unit; diorama playsets for action figures and dolls; dolls and doll accessories; pet toys; pet accessories; pet clothing; pet jewelry; pet beds and furniture; pouches and bags for storing and disposal of pet waste

 

The registered mark in U.S. Registration No. 5556799 is TROUBLE MAKER, in standard characters, for use on:

 

Class 28: Backgammon games; Board games; Card games; Checkers games; Chess games; Dart games; Dice games; Equipment sold as a unit for playing board games; Equipment sold as a unit for playing card games; Equipment sold as a unit for playing party games; Memory games; Parlour games; Party games; Tabletop games; Target game

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.

 

Comparing the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, applicant’s mark is TROUBLEMAKERS and registrant’s mark is TROUBLE MAKER.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).  Here, applicant’s mark is the plural form of registrant’s mark.

 

Further, the compared marks are otherwise identical except for a slight difference in appearance between applicant’s mark, which appears as a compound word with no space separating the words, that is, TROUBLEMAKERS; and registrant’s mark, which appears as multiple words with space separating the words, that is, TROUBLE MAKER.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Since the marks are highly similar in sound, appearance, and connotation, source confusion is likely. 

 

Comparing the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registration(s) are identical as to: “card games,” “dart games,” and “parlor games” which is spelled in the British English variant “parlour games” in applicant’s identification of goods.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, these goods are related.  

 

Further, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe target games, which presumably encompasses all goods of the type described, including applicant’s more narrow “toy target shooting sets containing toy weapons and targets sold together as a kit.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, these goods of applicant’s and registrant’s are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

The attached Internet evidence, consisting of screenshots from the Fisher-Price, Hasbro, and Little Tikes websites, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  Further, the same evidence demonstrates that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Since the marks are highly similar and the goods are closely related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods Requirement

 

The wording “toys, namely, bubble toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; games involving using bubble solution and bubble blowing toys; toy game balls and accessories therefor; toy cannons; toy bouncers, namely, sit-down bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, bounce balls; toys, namely, bubble making toys, liquid bubble solution, toys involving bubbles and blowing bubbles; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; molded plastic character toys with connectable and/or interchangeable elements; electronic educational game machines; play sets for toy figurines, play sets for toy characters; play toys and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; plush toys, plush stuffed toys, plush dolls and plush covered balls; action figures, dolls and figurines, rubber toys in the shape of food and household goods; toy holiday ornaments of rubber; elastic toys, namely, rubber band toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy currency, toy make-up and toy make-up accessories; toy purses and toy jewelry; bath toys; sand toys, toy phones and toy personal digital assistants; fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories, light-up toys for projecting images, bubble toys, namely, bubble making wand and solution sets, ride-on toys; toy purses, toy keychains, toy coins and currency, walkabout toys, namely, wind-up walking toys; toy eyeglasses; bubble making toys and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses and pens/markers, all packaged and sold as a unit; diorama playsets for action figures and dolls” in the identification of goods is indefinite and must be clarified because the specific nature of the toy goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, applicant must clarify the wording “pet accessories; pet beds and furniture; pouches and bags for storing and disposal of pet waste” in the identification of goods in International Class 28 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what specific nature of the pet goods are.  Further, this wording could identify goods in more than one international class.  For example, pet accessories that are pet brushes are in International Class 21 and pet beds for household pets are in International Class 20. 

 

Applicant has classified “pet jewelry” and “pet clothing” in International Class 28; however, the proper classification is International Class 14 and 18 respectively.  Therefore, applicant may respond by (1) adding International Class 14 and 18 to the application and reclassifying these goods in the proper international class, (2) deleting “pet jewelry” and “pet clothing” from the application, or (3) deleting the remainder of the items in the identification leaving just one entry and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 28 for “water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  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.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

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. 

 

Applicant may adopt the following identification, if accurate: 

 

Class 16: plastic bags for pet waste disposal

 

Class 18: pet clothing; pet accessories, namely, canvas, vinyl and leather pouches for holding disposable bags to place pet waste in

 

Class 20: pet beds for household pets and pet furniture

 

Class 21: pet accessories, namely, pet brushes, drinking bowls, feeding dishes

 

Class 28: Toys, games, playthings, and sporting equipment, namely, party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; bubble wand making and solution toy sets, namely, bubble toy wands, liquid bubble solution, wand toys for bubbles and blowing bubbles, bubble making wands, bubble blowing toy wands; bubble toys, namely, bubble making wand and edible solution sets; water toys; party games involving using bubble solution and bubble blowing toys; parlor games; play balls; toy game balls and accessories therefor, namely, nets and paddles; toy weapon cannons; toy bouncers, namely, inflatable sit-down ride-on toy bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, inflatable bounce ball toys; inflatable pit balls for recreational use; inflatable hopper balls for recreational use, action figure toys, play sets for actions figures; party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; bubble wand making and solution toy sets, namely, bubble making toy wands, liquid bubble solution, wand toys for bubbles and blowing bubbles; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls; balls used for game play, baseball bats, softball sets comprising softballs and softball bats, tennis rackets, golf clubs and sets comprising golf balls and golf clubs and bags therefor; card games; figurines in the nature of modeled plastic toy figurines; molded plastic character toy figurines with connectable and/or interchangeable elements; collectible toy figurines; collectable toy animal figurines; collectible bath toys; children's dress-up fashion accessories in the nature of toy purses, toy shoes, and toy hats; toy action figures; plastic toy characters; collectible plastic toy characters; collectable bendable toy characters; accessories for modeled plastic toy figurines; accessories for toy plastic characters; articles of clothing for toys, namely, outfits for toys; pouches for toys, namely, cases for toy vehicles; puppets; puzzles; packaged amusement and educational games, namely, electronic educational games in the nature of hand-held units for playing educational electronic games; electronic educational game machines for children; toy environments in the nature of toy environments for use with toy figurines and toy environments for use with toy characters and figurine play pieces, namely, toy buildings, toy vehicles, toy building structures, toy construction sets; play sets for toy action figurines, play sets for toy action figure characters; doll costumes, namely, play toy costumes; fantasy character toys; toy action figures and accessories therefor; play toy weapons and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; inflatable elastomeric toys in the shape of animals, insects, figurines, and creatures, and other recognizable object shapes when not in a stressed or stretched state; and elastomeric balls for play; plush toys, plush stuffed toys, plush dolls and plush covered toy balls; action skill games; hand-held, non-electronic skill games; tossing disc toys; toy projectiles and accessories therefor; action figures, dolls and toy figurines, rubber toys in the shape of food and furniture; toy watches and toy jewelry; toy Christmas tree ornaments of rubber; balls for play, namely, balls for juggling, games, and sports; toy animals; toy insects; inflatable thin rubber toys and rubber-like toys; rubber character toys; toy dice; toy dolls; elastic toys, namely, rubber band character toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy guns and toy ammunition, toy dart guns, dart games and darts; toy weaponry, namely, hand weapons in the nature of firearms, cap guns, handheld projectile-launchers, sling-shots, and ammunition for sling-shots; toy guns; toy dart guns; toy play currency, toy imitation make-up and toy imitation make-up accessories; dolls; toy coin banks; children’s dress up accessories, namely, toy purses and toy jewelry; bath toys; sand toys; role playing toys in the nature of play sets for children to imitate real life occupations, namely, toy phones and toy personal digital assistants; children’s dress-up accessories, namely, fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories; light-up toys for projecting images; bubble toys, namely, bubble making wand and solution sets; ride-on toys; toy purses, toy keychains, toy coins and currency; walkabout toys, namely, wind-up walking toys; toy target shooting sets containing toy weapons and targets sold together as a kit; fitted covers specially adapted for toy cars, airplanes, and boats; role-playing toys in the nature of play sets for children to imitate real life situations and occupations, and role-playing games; toy weapons; toy swords, toy guns and toy darts; children’s dress-up accessories, namely, toy eyeglasses; bubble making toy wands and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses, and pens and markers, all packaged and sold as a unit; action figure and doll accessories, namely, diorama playsets for action figures and dolls; dolls and doll accessories; pet toys

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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-Class Application 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 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 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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.

 

Response Guidelines

 

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.  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.  

 

 

 

/Elizabeth Shen/

Trademark Examining Attorney

Law Office 121

571-270-7111

elizabeth.shen@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 5/6/2019 FOR U.S. APPLICATION SERIAL NO. 88339091

 

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 5/6/2019 (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.