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: 6/6/2019

 

 

 

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 OF OFFICE’S DATABASE OF MARKS

 

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:

 

• Identification of Goods
• Multiple-Class Application Requirements
• Disclaimer Required
• Response Guidelines

 

I.                IDENTIFICATION OF GOODS

 

Certain wording in the identification of goods is indefinite and overly broad, and therefore could include a wide array of goods, including goods found in other international classes, as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  More specifically, the wording “catalogues” is indefinite wording since the applicant has not specified the field of use in which these goods are provided.  Applicant is also advised that if the “catalogues” are only used for ordering applicant’s own goods or services, these “catalogues” may not be goods in trade if they are not sold or provided separately from the provision of other goods or services.

 

The wording “books, magazines, and periodicals featuring stories, games and activities for children and teens;” is indefinite and overly broad since this clause does not specify the fields or overall nature of the goods provided.  The wording “cartoon strips” is indefinite as to the method in which these cartoons are provided and therefore could refer to goods in International Class 009 or 016 as well as services in International Class 041.  Specifically, in International Class 009, this wording could refer to downloadable cartoon strips whereas it could also refer to printed cartoon strips in International Class 016 or online non-downloadable cartoon strips in International Class 041.

 

The wording “gift cards” is likewise indefinite as to the nature of the goods provided and could refer to goods ranging from “paper gift cards” in the nature of stationery or “non-magnetically encoded gift cards” in International Class 016 to “magnetically encoded gift cards” in International Class 009

 

The wording “paper party favors” and “paper party hats” appear to be misclassified in International Class 016 since these entries are definite clauses in the scope of International Class 028.  Accordingly, applicant must reclassify these goods to the appropriate class or delete this wording from the identification.

 

The wording “trading cards” is overly broad since it could refer to goods like “collectible trading cards” in International Class 016 or alternatively “trading card games” in International Class 028.  As such, applicant must clarify the nature of the goods provided for an accurate identification of goods.

 

The wording “caps” is indefinite and overly broad since this term could refer to goods in a variety of classes, such as, “surgical caps in International Class 010, blasting caps” in International Class 013, “caps as clothing” in International Class 025, and/or “wave caps” in International Class 026 among several other different “cap” goods.  Similarly, the wording “wrist bands” is unclear as to the nature of the goods since this clause could refer to “electronically encoded identity wristbands” in International Class 009, “motion sickness wrist bands utilizing acupressure therapy” in International Class 010, “wristbands for the retention of writing instruments” in International Class 016, and/or “wrist bands as clothing”.

 

The wording “drawing rulers” and “board games” have been duplicated in the identification of goods.

 

As an initial matter in International Class 028, applicant must clarify the wording “accessories therefore” to state “accessories therefor” since the former version is indefinite.  Additionally, the wording “building blocks” is overly broad since this term could refer to “toy building blocks” in International Class 028 or goods like “glass blocks for building” and/or “concrete building materials in the nature of building blocks” in International Class 019.  As such, applicant must clarify the type of goods provided to enable an accurate identification and classification of goods provided. 

 

The wording “children’s play cosmetics” is overly broad since this could refer to goods in International Class 003 and/or International Class 028 depending on their nature; e.g. “Cosmetics for children” are classified in Class 003, and “toy imitation cosmetics” are classified in Class 028. 

 

The wording “toy model hobby craft kits” is indefinite and overly broad since this wording does not specify the primary nature of the predominant components of the goods provided.  See e.g. TMEP 1401.05(a). 

 

To address the issues stated above, applicant may substitute the following wording, if accurate:

 

(Add Class) International Class 003

 

Children's play cosmetics, namely, cosmetics for children

 

(Add Class) International Class 009

 

            electronically encoded identity wrist bands

 

International Class 016

 

Series of books on a variety of topics related to audiovisual entertainment, namely, a series of fiction and non-fiction books on a variety of topics in the nature of children's entertainment; fiction and non-fiction books on a variety of topics in the nature of children's entertainment; comic books; graphic novels; periodicals in the field of comic book stories, storyboards, and artwork; magazines in the field of children's entertainment; newspapers on a variety of topics; newspapers and photographs of general interest; journals, periodicals, and newsletters on a variety of topics, namely, children's entertainment; photographs; stationery; catalogues in the field of {specify field, e.g. children’s fiction stories}; catalogues relating to children's television entertainment; address books; almanacs; appointment books; art prints; arts and craft paint kits; autograph books; baby books; ball point pens; baseball cards; binders; bookends; bookmarks; books, magazines, and periodicals  in the fields of printed children’s stories which also feature games in the nature of printed crossword puzzles and activities for children and teens; bumper stickers; calendars; printed cartoon strips; Christmas cards; chalk; children's activity books; coasters made of paper; coin albums; coloring books; color pencils; coupon books; decals; decorative paper centerpieces; diaries; drawing rulers; envelopes; erasers; felt pens; flash cards; non-magnetically encoded gift cards; gift wrapping paper; globes; greeting cards; guest books; maps; memo pads; modeling clay; newsletters in the field of children's entertainment; note paper; notebooks; notebook paper; paintings; paper flags; paper cake decorations; paper party decorations; paper napkins; paper party bags; paperweights; paper gift wrap bows. paper pennants; paper place mats; paper table cloths; pen or pencil holders; pencils; pencil sharpeners; pen and pencil cases and boxes; pens; printed periodicals in the field of children's entertainment; photograph albums; photo-engravings; pictorial prints; picture books; portraits; postcards; posters; printed awards; printed certificates; printed invitations; printed menus; recipe books; rubber stamps; {further specify or delete duplicate wording drawing rulers;} score cards; stamp albums; staplers; stickers; collectible trading cards; writing paper; writing implements

 

International Class 025

 

Athletic shoes; bandanas; baseball caps; beach cover-ups; beachwear; belts; bikinis; blazers; boots; bow ties; caps in the nature of clothing; cloaks; cloth bibs; coats; costumes for use in role-playing games; dresses; ear muffs; footwear; gloves; golf shirts; Halloween costumes; hats; head bands; headwear; hosiery; infantwear; jackets; jeans; jerseys; kerchiefs; leotards; leg warmers; lingerie; loungewear; mittens; neckties; night shirts; night gowns; overalls; pajamas; pants; polo shirts; ponchos; rainwear; robes; sandals; scarves; shirts; shoes; skirts; shorts; slacks; slippers; sleepwear; socks; stockings; sweaters; sweat pants; sweat shirts; swimsuits; t-shirts; tank tops; tights; underwear; vests; and wrist bands in the nature of clothing

 

International Class 028

 

Action skill games; action figures and accessories therefor; board games; card games; children's multiple activity toys; badminton sets; balloons; basketballs; bath toys; baseballs; beach balls; bean bags; bean bag dolls; {further specify or delete duplicate entry for board games;} building blocks; bowling balls; bubble making wands and solution sets; chess sets; children's play cosmetics, namely, toy imitation cosmetics; Christmas stockings; collectable toy figures; crib mobiles; crib toys; disc toss toys; dolls; doll clothing; doll accessories; doll playsets; electric action toys; equipment sold as a unit for playing card games; fishing tackle; golf balls; golf gloves; golf ball markers; hand held unit for playing electronic games other than those adapted for use with an external display screen or monitor; hockey pucks; inflatable toys; jigsaw puzzles; jump ropes; kites; magic tricks; marbles; manipulative games; mechanical toys; music box toys; musical toys; parlor games; party favors in the nature of small toys; party games; playing cards; plush toys; puppets; roller skates; rubber balls; skateboards; soccer balls; spinning tops; squeeze toys; stuffed toys; table tennis tables; talking toys; target games; teddy bears; tennis balls; toy action figures and accessories therefor; toy bucket and shovel sets; toy mobiles; toy vehicles; toy scooters; toy cars; toy model hobby craft kits comprised of scale model kits; toy figures; toy banks; toy trucks; toy watches; wind-up toys and yo-yos; paper party favors; paper party hats

 

See TMEP §1402.01.

 

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 in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant should note the multiple-class application requirements provided below.

 

II.             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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least five or more classes; however, applicant submitted fees sufficient for only three 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.

 

Applicant should note the additional requirement stated below.

 

III.           DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “SHOW” because it is not inherently distinctive.  These unregistrable term at best merely describes a characteristic and feature of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the American Heritage Dictionary, Oxford Dictionary, and Merriam-Webster Dictionary shows this wording “show” refers to performance or television or radio program.  In the context of the identified goods, this wording merely describes the subject matter and feature of the applicant’s goods like the applicant’s “series of books on a variety of topics related to audiovisual entertainment,” books, newsletters, periodicals and catalogues relating to children’s entertainment, as well as “costumes for role-playing games,” and the various toys and hand held units for playing electronic games identified in the application.  Thus, the wording merely describes a feature of applicant’s goods and must be accordingly disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SHOW” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should note the response guidelines provided below.

 

IV.             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.

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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.  

 

/Amer Raja/

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 6/6/2019 FOR U.S. APPLICATION SERIAL NO. 88353185

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/6/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Amer Raja/

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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.