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:  June 07, 2019

 

 

 

 

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  

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 Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

 

 

Identification of Goods—Class 25

 

The identification of goods is indefinite and must be clarified because some of the items are no longer acceptable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

“Clothing, namely, t-shirts, shirts, sweatshirts, tank-tops, multipurpose neckwear, bandanas, pants, softshell pants, ski pants, shorts, socks, jackets, technical shell jackets, vests, sweaters, dresses, gloves, belts, glove liners as clothing, neck gaiters, tights, underwear, thermal underwear, balaclavas, mittens, belts, skirts, skorts, bathing suits, coats, cycling shorts and cyclists' jerseys, camisoles, leggings, parkas, pullovers, gaiters, bathing trunks, hoodies, girdles, collar protectors, namely, [LIST ITEMS, e.g., scarves, etc.], hosiery, sportswear, namely, [LIST ITEMS, e.g., shorts, shirts, etc.], weather-resistant outdoor clothing, namely, [LIST ITEMS, coats, raincoats, etc,]; Outdoor apparel, namely, shell jackets, jackets, pants, base layers, gloves, and hats; Ski boots and snowboard boots; Infant clothing, namely, bodysuits; Headwear, namely, caps, cap visors, hats, beanies, headbands,” in Class 25.

 

Identification of Services—Class 35

 

The identification of services is indefinite and must be clarified because some of the items are not properly worded.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:

 

“On-line retail store services featuring clothing, headwear, footwear, outerwear, eyewear, running clothing and running shoes, bike clothing, fitness clothing and accessories, tote bags, watches, activity trackers, compasses, inclinometers, heart rate monitors, altimeters and accessories, tote bags, ski and snowboard equipment, snowshoes, avalanche safety, and other winter accessories, mountain, road, cyclocross, triathlon, time and trial, and kid's bikes, bike parts, bike helmets, bike clothing, and bike accessories, kayaks, kayak clothing, and related accessories, canoes, paddles and related accessories, personal flotation devices, water safety helmets, survival gear, safety kits, rescue throw bags, camping, hiking, backpacking, fishing, rock climbing, wall climbing, mountaineering, and mountain climbing equipment and related accessories, surfboards, wetsuits, rashguards, and surf accessories, yoga mats, foam blocks, foam rollers, meditation cushions, towels, smart scales, audio equipment, food, nutritional supplements, luggage, luggage and equipment car racks and related accessories; Dissemination of advertising for others via an on-line electronic communication network on the internet; Promoting the goods and services of others by preparing and placing advertisements on a web site access through a global computer network; Provision of information and advice to consumers regarding the selection of products and items to be purchased according to customer needs and interests, including the suitability of items for use while traveling to particular destinations,” in Class 35.

 

Scope Advisory

 

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

 

Foreign Wording

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark BERGFREUNDE.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “BERGFREUNDE” in the mark is “[PROVIDE TRANSLATION]”.  TMEP §809.03. 

 

NOTE:  If there is no English translation of the mark, applicant must so state.

 

Request for Information

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “BERGFREUNDE” has any significance in the relevant trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  

 

Does BERGFREUNDE have a geographic meaning?  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Does BERGFREUNDE have surname significance?  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Where is BERGFREUNDE located and what is it?  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Response

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

/EFalk/

Erin M. Falk

erin.falk@uspto.gov

U.S. Patent & Trademark Office

Trademark Examining Attorney, LO101

(571)-272-1110

 

 

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 June 07, 2019 for

U.S. Trademark Application Serial No. 88346455

 

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. 

 

 

/EFalk/

Erin M. Falk

erin.falk@uspto.gov

U.S. Patent & Trademark Office

Trademark Examining Attorney, LO101

(571)-272-1110

 

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 June 07, 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.”