Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  December 05, 2019

 

The application is suspended for the reasons specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 88251716

 

The examining attorney has discussed with the applicant, and the applicant does intend to perfect the 44(d) basis and rely on Section 44(e) as the basis for registration.

Application suspended until submission of foreign registration or proof that foreign registration was renewed.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

OUTSTANDING REQUIREMENTS: AMENDED IDENTIFICATION OF GOODS & MULTIPLE CLASS APPLICATION On December 3, 2019, the trademark examining attorney and Aaron T. Olejniczak discussed the issues below.

Amended Identification of Goods Required

First, applicant has included all the wording in Class 36, which must be amended as “clothing” items are in Class 25. Second, the wording “wearing apparel for the construction industry, namely, hard hats, safety boots, safety glasses, safety vests” in the identification of goods for International Class 36 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 protective boots in Class 9 and other safety apparel in Class 9.

Applicant may substitute the following wording, if accurate: 

Class 9: wearing apparel for the construction industry, namely, hard hats, safety protective industrial boots, safety optical glasses, reflective safety vests, work gloves for protection against accidents

Class 25: Clothing, namely, bib overalls, baseball caps, casual coats, coats, coveralls, crew neck shirts, dresses, fleece jackets, fleece vests, flying suits, hats, hiking jackets, jackets, jean shirts, jeans, jerseys, jumpers, jumpsuits, mittens, muscle shirts, neck warmers, pants, raincoats, scarves, shirts, shop coats and laboratory coats, shorts, skirts, sleepwear, smocks, socks, sweatbands, sweat shorts, sweaters, sweat pants, sweatshirts, tank tops, tops, t-shirts, turtlenecks, vests, and wristbands; Headwear namely, caps, ear muffs, hats, and toques; belts; Footwear namely, boots, running shoes, shoes, and work boots; aprons; wearing apparel for the construction industry, namely, work pants and work socks

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.

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 Sections 1(b) and 44:

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

No response required.  Applicant may file a response, but is not required to do so. 

 

 

Alexandra Liebl

/Alexandra Suarez Liebl/

Examining Attorney

Law Office 120

p) (571) 272-4845

e) Alexandra.Suarez@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 05, 2019 for

U.S. Trademark Application Serial No. 88360876

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

Alexandra Liebl

/Alexandra Suarez Liebl/

Examining Attorney

Law Office 120

p) (571) 272-4845

e) Alexandra.Suarez@uspto.gov

 

 

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).

 

 

 

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.”