To: | THIRTY FIVE VENTURES LLC (lsteinau@wilkauslander.com) |
Subject: | U.S. Trademark Application Serial No. 88362839 - STUDIO 35 - 5168.02 |
Sent: | January 30, 2020 02:55:33 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88362839
Mark: STUDIO 35
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Correspondence Address: |
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Applicant: THIRTY FIVE VENTURES LLC
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Reference/Docket No. 5168.02
Correspondence Email Address: |
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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: January 30, 2020
INTRODUCTION: This Office action is supplemental to and supersedes the previous Office action issued on December 18, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: identification of goods cannot be amended to include previously deleted goods. See TMEP §§706, 711.02. Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: specimen provided. See TMEP §713.02.
CONTINUED AND MAINTAINED: Trademark Section 2(d) Refusal for Reg No. 4430116 is continued and maintained because of the similarity of the marks and relatedness of the goods. Applicant’s arguments will be fully addressed in the case of a final Office Action. See TMEP §§713.02, 714.04.
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Identification of Goods Requires Amendment
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
In the present case, Applicant amended the original identification of goods from “earphones; headphones; wireless speakers; audio speakers” to “earphones; headphones” as evidenced by the Amendment to Allege Use on record dated November 5, 2019 and reiterated in the Response Office Action dated November 29, 2019. However, in the response to Office Action dated December 26, 2019 Applicant added the previously deleted wording back into the identification of goods. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e). Once an applicant amends the identification of goods in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications and restricts the scope of the goods to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. 37 C.F.R. §2.71(a); In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991) ; In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991). This includes amendments to the identification submitted in an amendment to allege use, a statement of use, or a request for an extension of time to file a statement of use. See 37 C.F.R. §§2.71(a), 2.88(b)(1)(iv), 2.89(f). Thus, Applicant may not add the deleted goods back into the identification of goods and the goods recited in the Amendment to Allege Use remain operative.
Applicant may substitute the following wording, if accurate:
Class 9
Earphones; Headphones
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.
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Cristel John/
Trademark Examining Attorney
Law Office 125
(571) 272-5412
cristel.john@uspto.gov
RESPONSE GUIDANCE