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: 5/30/2019

 

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

 

Search Results

 

The trademark examining attorney has searched the Office’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).

 

SUMMARY OF ISSUES:

 

• Refusal – Does Not Function as a Trademark – Identifies Name of Character
• Identification of Goods is Indefinite – Applies to Specific Goods in Class 25 ONLY

 

 

Refusal - Does Not Function as a Trademark - Identifies Name of Character

 

Registration is refused because the applied-for mark, as shown by specimen of record, is used to identify only a particular character for applied-for goods in International Class 25.  The name “RED TITAN” as embedded in the following product description featured on applicant’s specimen of record does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Caserta, 46 USPQ2d 1088, 1091 (TTAB 1998); In re Frederick Warne & Co., 218 USPQ 345, 348 (TTAB 1983); TMEP §1202.10.

 

“Your little guy will be ready to take on villains when he wears the Short-Sleeve T-Shirt from Ryan’s World. This soft cotton-blend T-shirt for toddler boys will keep him comfy all day no matter what he’s up to. Featuring Ryan’s superhero alter ego, The Red Titan, holding a photo frame, this toddler boys’ printed T-shirt pairs well with a variety of bottoms for versatile wear. Plus, you can easily layer it under his jackets and hoodies when the colder weather sets in.” (emphasis added).

 

Rather, the wording “RYAN’S WORLD TODDLER BOYS’ SHORT SLEEVE T-SHIRT - BLUE” is used as a source-indicating trademark on the specimen of record.

 

Applicant may respond to this refusal by submitting evidence that the applied-for mark is used to identify the goods in addition to identifying the character.  The name or illustration of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the source of the goods in addition to identifying the character.  See Caserta, 46 USPQ2d at 1090; In re Frederick Warne, 218 USPQ at 348; TMEP §1202.10.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods is Indefinite - Applies to Specific Goods in Class 25 ONLY

 

The wording “Clothing” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said items of clothing in International Class 25 (e.g., “Clothing, namely, {indicate items in Class 25, e.g., tops, shirts, jeans}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Headgear” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 25 (e.g., “Headwear, namely, hats and caps”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Apparel” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said items of clothing in International Class 25 (e.g., “Apparel, namely, {indicate items in Class 25, e.g., tops, shirts, jeans}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Outerwear” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 25 (e.g., “Outerwear, namely, {specify common commercial name in Class 25, e.g., jackets}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “accessories” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 25 (e.g., “clothing accessories, namely, {indicate common commercial name in Class 25, e.g., belts}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “soft-soled slides” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 25 (e.g., “soft-soled slides in the nature of sandals”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “caps” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the commercial nature of said goods in Class 25 (e.g., “caps being headwear”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 25 for “scarves”.  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).

 

The wording “Children’s outerwear clothing” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 25 (e.g., “Children’s outerwear clothing, namely, {specify common commercial name in Class 25, e.g., jackets}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Children’s…clothing accessories” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 25 (e.g., “Children’s clothing accessories, namely, {specify common commercial name in Class 25, e.g., belts}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Note: The examining attorney sets forth below, the suggested changes to the identification of goods in bold and italicized font. The examining attorney uses strikethrough language to indicate redundant wording that must be deleted from the identification of goods.

 

Applicant may substitute the following wording, if accurate: 

 

“Clothing, namely, {indicate items in Class 25, e.g., tops, shirts, jeans}; Footwear; Headwear, namely, hats and caps; Clothing, namely, tops, tank tops, t-shirts, shirts; Apparel, namely, {indicate items in Class 25, e.g., tops, shirts, jeans}, outerwear, namely, {specify common commercial name in Class 25, e.g., jackets}, underwear, headwear, clothing accessories, namely, {indicate common commercial name in Class 25, e.g., belts}, scarves, swimwear, hosiery, footwear, slipper socks, socks, tights, leggings, leg warmers, soft-soled slides in the nature of sandals, slippers; Clothing, namely, sweaters, sweatshirts, hooded sweatshirts, pullovers, jackets, coats, overcoats, parkas, jogging suits, jerseys, onesies, shortalls, overalls, skirts, rompers, coveralls, dresses, jumpers, bottoms, pants, shorts, leggings, scarves, shawls, belts, gloves, suspenders, neckwear, bowties, socks, stockings, muffs; Knitwear in the nature of tops, t-shirts, shirts, sweaters, sweatshirts, hooded sweatshirts, pullovers, jackets, coats, shortalls, overalls, skirts, rompers, coveralls, dresses, jumpers, bottoms, pants, shorts, scarves, shawls, gloves, mittens, socks; Underclothing; Underwear; Camisoles; Brassieres; Clothing for gymnastics, namely, leotards, tights, t-shirts, leggings; Ponchos; Rainwear; Rain boots; Galoshes; Fleece clothing in the nature of tops, pullovers, sweatshirts, hooded sweatshirts, sweaters, vests, jackets, coats, overcoats, bottoms, pants, leggings, scarves, shawls, socks, slippers, gloves, mittens, headbands, hats, caps being headwear, berets and beanies; Woven clothing in the nature of tops, bottoms, dresses, skirts, shirts, jackets, coats; Swimsuits, swimwear, cover-ups and beach cover-ups; Wetsuits and rash guards; Sleepwear and pyjamas; Bath robes, bathing and shower caps, bath slippers; headwear, namely, hats, caps, visors, berets beanies and headbands; socks, stockings and slippers; Belts, suspenders, neckwear, neckties, bow ties, scarves, shawls, bandanas and muffs; Footwear; Slippers, thongs, sandals, boots; Sleeping masks for eliminating light; Infant's and children's clothing, namely, tops, tank tops, t-shirts, shirts, sweaters, sweatshirts, hooded sweatshirts, pullovers, jackets, coats, overcoats, parkas, jogging sets, jerseys, shortalls, overalls, onesies, skirts, rompers, coveralls, dresses, jumpers, bottoms, pants, shorts, leggings, belts, socks, slippers, cloth bibs, scarves, shawls, underwear, underclothing; Boys and girls packaged underwear; Infant's and children's underclothing, underwear, camisoles and brassieres; Children's outerwear clothing, namely, {specify common commercial name in Class 25, e.g., jackets}, sleepwear, swimwear, underwear, hosiery, footwear and clothing accessories, namely, {specify common commercial name in Class 25, e.g., belts}; Children's clothing for gymnastics, namely, leotards, tights, t-shirts, leggings; Infant's and children's knitwear in the nature of tops, t-shirts, shirts, sweaters, sweatshirts, hooded sweatshirts, pullovers, jackets, coats, overcoats, shortalls, overalls, skirts, rompers, coveralls, dresses, jumpers, bottoms, pants, shorts, scarves, shawls and socks; Infant's and children's fleece clothing in the nature of tops, pullovers, sweatshirts, hooded sweatshirts, sweaters, vests, jackets, coats, overcoats, bottoms, pants, leggings, scarves, shawls, socks, slippers, gloves, mittens, headbands, hats, caps, berets and beanies; Children's woven clothing in the nature of tops, bottoms, dresses, skirts, shirts, jackets, coats; Infant's and children's swimsuits, swimwear, cover-ups and beach cover-ups; Infant's and children's ponchos, rainwear, rain boots and galoshes; Children's wetsuits and rash guards; Infant's and children's sleepwear, pyjamas, bath robes, bathing and shower caps, bath slippers; Infant's and children's headwear, namely, hats, caps, visors, berets and beanies; Infant's and children's belts, suspenders, neckwear, neckties, bow ties, scarves, shawls and bandanas; Infant's and children's socks and slippers; Costumes for use in role-playing games”; in International Class 25.

 

Scope of Goods (Advisory)

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Furthermore, if applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.

 

 

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.  

 

 

 

 /Brian P. Callaghan/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

Ph: (571) 272-4906

brian.callaghan@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 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88340784

 

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 5/30/2019 (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.