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: 6/5/2019

 

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 June 5, 2019, the trademark examining attorney and David Jung 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.

 

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  Where applicant uses indefinite words such as “equipment” (e.g., “diving equipment” in Class 9, “golf equipment” in Class 28) and “articles” (e.g., “gymnastic and sporting articles” in Class 28), such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The wording “digital video eyewear” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, it is unclear how eyewear can have video-related properties or functions.

 

The word “clothing” and its variations (e.g., “upper clothes for diving” in Class 9, “waterproof clothing” and “sports wear” in Class 25, etc.) in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

Applicant must amend the identification to insert the word “namely,” after the various “clothing” entries and then list the specific types of clothing items in that class. 

 

Likewise, the identification for “bags” is indefinite and too broad and must be clarified because the nature of the bags is unclear and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example “bags” could refer to “all purpose sports bags” in International Class 18 or “computer bags” in International Class 9.

 

Further, the wording “trunks” in the identification of goods for International Class 18 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass trunks being luggage in Class 18, and trunks being clothing in Class 25.

 

In Class 25, the wording “bathing drawers” and “neck warmers” in the identification of goods is indefinite and must be clarified to further specify the nature of the goods, i.e., “as clothing.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In Class 28, applicant must further specify the nature of applicant’s “gloves for games,” the purpose of applicant’s “knee guards” (e.g., for athletic use), and the nature of the applicant’s “half golf bags” (e.g., half golf club bags).

 

The wording “rubber toys” in the identification of goods for International Class 28 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass rubber sex toys in Class 10, and rubber character toys in Class 28.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Class 9:      Spectacle lenses; contact lenses; circle lenses; spectacles; 3D spectacles; digital video eyewear in the nature of {further describe nature, e.g., smartglasses, wearable computers}; safety eyeglasses; protective eyeglasses; sunglasses; spectacles and eyeglasses for swimming; safety goggles; glasses for sports; goggles for sports; goggles for golf; snow goggles; ski glasses; survival suits; life jackets; diving suits; divers' life jackets; upper clothes for diving, namely, {specify clothes, e.g., diving suits, diving gloves, face masks for diving}; diving gloves for divers; safety vests for water-skiing; breathing apparatus for underwater swimming; diving equipment, namely, {specify equipment, e.g., diving suits, protective diving shoes, face masks for diving}; divers' masks; snorkels; ear plugs for divers; fire resistant gloves; protective helmets; protective helmets for sports; sports helmets; cell phone cases

 

Class 18:    Bags, namely, {specify types of bags, e.g., weekend bags, gym bags, clutch bags}; backpacks; rucksacks for mountaineers; sport bags; rucksacks for sports; sports packs; bags for sports clothing; luggage and trunks being luggage; purses; handbags; pocket wallets; small coin purses

                             

Class 25:    Clothing, namely, {specify clothes, e.g., shirts, skirts, shorts}; wind resistant jackets; short trousers; waterproof clothing, namely, {specify clothes, e.g., waterproof boots, waterproof jackets and pants}; Bermuda shorts; beachwear; swimsuits; bathing drawers as clothing; snowboard trousers; snowboard jackets; snow boarding suits; sports jerseys; sports wear, namely, {specify clothes, e.g., sports pants, sports bra, sports shoes}; footwear; sandals; socks; blue jeans; tee-shirts; drawers as clothing; undershirts; brassieres; underpants; coverups; leggings; tank tops; board shorts; winter coats; balaclavas; neck warmers as clothing; hooded pullovers; golfwear, namely, {specify clothes, e.g., golf shorts, golf shirts, golf caps}; golf shoes; bags specially adapted for golf shoes; fitted swimming costumes with bra cups; beach sandals; beach shoes; beach footwear; bikinis; surf wear; wet suits for water-skiing and sub-aqua; bathing caps; snowboarding gloves; sports shoes; slippers; children's shoes; aqua shoes; infants' shoes; clothing for cycling, namely, {specify clothes, e.g., cycling shoes, cycling shorts, cycling caps}; flip flops; hats; Shorts for diving

 

Class 28:    Gloves for games, namely, gloves for {specify purpose, e.g., football, windsurfing, fencing}; rubber character toys; golf bags, with or without wheels; golf balls; gloves for golf; golf equipment, namely, {specify equipment, e.g., golf bags, golf clubs, golf tees}; trolley bags for golf equipment; golf clubs; golf club bags; covers for golf clubs; knee guards for athletic use; ski bags; gymnastic apparatus and sporting articles, namely, {specify sporting articles, e.g., golf ball dispensers, spring boards, portable pitching mounds}; caddie bags for golf clubs; half golf club bags; hand held units for playing electronic games; flippers for swimming; flippers for scuba diving; flippers for diving

 

See TMEP §1402.01.

 

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.

 

ADVISORY – MULTIPLE-CLASS APPLICATION REQUIREMENTS

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 that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 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 Trademark Act Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

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.

 

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.  

 

 

 

/Andrea B. Cornwell/

Examining Attorney

Law Office 115

(571) 272-4608

andrea.cornwell@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 6/5/2019 FOR U.S. APPLICATION SERIAL NO. 88348909

 

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 6/5/2019 (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.