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: 6/18/2019

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

1. Section 2(d) – Likelihood Of Confusion Refusal
2. Advisory:  Potential Section 2(d) Refusal – Two Prior Pending Applications
3. Identification Of Goods Overly Broad And Indefinite - Clarification And Amendment Required
4. Requirement To Clarify The Number Of Classes For Which Registration Is Sought
5. Advisory:  Multiple-Class Application Requirements for a Section 1(b) Filing Basis

 

SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5198825.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

In this case, applicant has applied to register the mark “ZION” for use in connection with “GandS: Clothing for men, women and children; namely, exercise wear, warm up suits, jogging suits, sweat suits, sweat pants and sweatshirts, bodysuits, leotards, leg warmers, swimwear, bathing suits, beach and bathing cover ups, suits, slacks, trousers, pants, jeans, shorts, sweat shorts, gym shorts, tops, jackets, coats, sport coats, shirts, sport shirts, T-shirts, knit shirts, polo shirts, pullovers, sweaters, vests, tank tops, blazers, jumpsuits, playsuits, overcoats, parkas, wind resistant jackets, leather jackets, footwear, shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals, headwear, hats, caps, visors, hoods, berets. Headbands, sweatbands, wristbands, ear muffs, neckwear, neckties, scarves, bandannas, sleepwear, robes, pajamas, nightshirts, rainwear, gloves, mittens, galoshes, loungewear, underwear, briefs, underpants, boxershirts, undershirts, suspenders, hosiery, socks, belts, sweat shirts, and masquerade.”

 

The mark in Registration No. 5198825 is “ZION JUDIACA” used in connection with “, in pertinent part, “Kippahs; Prayer Shawls; Socks; T-shirts; Hats; Fur hats; Footwear; Coats; Gloves; Mittens; Aprons; Baby bibs not of paper; Caps; Tzitzis, namely, string fasteners for Jewish religious clothing,” among other goods. 

 

Introduction to Section 2(d) Analysis

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Here, applicant’s mark, “ZION”, is confusingly similar to the registered mark, “ZION JUDIACA”, in sound, appearance, and overall commercial impression. Specifically, the marks sound and appear similar in that they begin with the identical term “ZION”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, the marks sound and appear similar in that consumer will focus on the term “ZION” in each of the marks as the first term in the respective marks.

 

The marks also share the same overall commercial impression. Specifically, the term “ZION” is a given name meaning “the ideal nation or society envisaged by Judaism.  See http://www.merriam-webster.com/dictionary/Zion and http://www.wordnik.com/words/Zion.  Thus, both marks conveys the same overall impression of a name that references the ideal nation envisaged by Judaism.

 

Additionally, though the registered mark contains the added term “JUDIACA”, this added term does not obviate the similarities of the marks as a descriptive term that has been disclaimed by registrant.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Therefore, “JUDIACA” is less significant because consumers will immediately recognize that the term conveys information about registrant’s goods, rather than view this term as a source-identifying term.  Consequently, consumers will focus on “ZION” in registrant’s mark.

 

Ultimately, when purchasers call for the goods of applicant and registrant using “ZION” and “ZION JUDIACA”, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.

 

Relatedness of the Goods

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, both the application and registration identify the following goods which are identical: “Socks; T-shirts; Hats; Footwear; Coats; Gloves; Mittens; Caps.” Next, applicant’s identification “tops, headwear” is broad and presumably encompasses all goods of the type described, including registrant’s more narrow “t-shirts, hats”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Conversely, registrant’s broad identifications “Hats; Footwear; T-shirts, socks ” broadly encompasses applicant’s more narrow “shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals, galoshes, caps, visors, hoods, berets, undershirts, hosiery.” Id.  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Applicant’s other various clothing articles are also closely related to registrant’s clothing articles because clothing manufacturers frequently offer a wide variety of clothing articles in the same channels of trade and under the same mark.  The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). The following attached Internet evidence demonstrates that a wide variety of clothing articles frequently travel in the same channels of trade, and under the same mark.  See e.g.,

 

1. http://www.forever21.com/us/shop/catalog/category/f21/women-main
2. http://www.gap.com/browse/category.do?cid=8792
3. http://www2.hm.com/en_us/index.html

 

The attached evidence establishes that goods similar to the parties’ respective goods frequently travel in the same channels of trade, and are offered to the same class of class of consumers in the same field of use.  Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer a wide variety of clothing articles, including the parties’ specified goods, under the same mark.  As a result, consumers encountering applicant’s and registrant’s respective goods at the same time are likely to mistakenly presume the goods originate from the same source because of the relationship between the goods.  Consequently, applicant’s and registrant’s respective goods are closely related under the likelihood of confusion analysis.

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, athletic wear, swimwear, socks, suits, coats, tops, bottoms, footwear, underwear, headwear, necktie, bandana, sleepwear, masquerade costumes, bandanas, cover ups, headbands, neckties, and sweatbands are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

See Registration Nos. 4960491, 5697643, 5559587, 5384511, 5570580, 5753381, 5593947, 5476674, 5167866, and 4994489.

 

This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Accordingly, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).]

 

Ultimately, because the marks are confusingly similar and the goods are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  Therefore, registration must be refused under Section 2(d).

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

ADVISORY:  POTENTIAL SECTION 2(d) REFUSAL – TWO PRIOR PENDING APPLICATIONS 

The filing date of pending U.S. Application Serial Nos. 87893440 and 87711935 precede applicant’s filing date.  See attached referenced applications.  If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications. 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 While applicant is not required to respond to the issue of the pending application, applicant must respond to this Office Action within six months of the mailing date to avoid abandonment.

REQUIREMENTS

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS OVERLY BROAD AND INDEFINITE - CLARIFICATION AND AMENDMENT REQUIRED

 

The wording “GandS” in the identification of goods is indefinite and must be clarified because the term does not appear to identify any discernible good or service, and appears to be an abbreviation for the phrase “goods and services,” which is unacceptable in the identification in that it is overly broad; not identifying any particular goods or services with the required particularity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If, in fact, the term “GandS” is an abbreviation for “goods and services”, then the term should simply be deleted from the identification as suggested below.

 

It appears a number of the identifications are indefinite because the identification uses improper punctuation.  Specifically, the identification “Clothing for men, women and children; namely, exercise wear, warm up suits,…” contains improper punctuation in that a semi-colon appears between “children” and “namely”, when a comma should have been used.  Therefore, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.  As such, the amendment below is suggested.

 

Similarly, the following portion of the identification “…sandals, headwear, hats, caps, visors, hoods, berets. Headbands…” is indefinite because a semi-colon should appear after “sandals” and after “berets” for the reasons explained above.

 

The identification “exercise wear” is indefinite and must be clarified because applicant must specify the particular exercise wear that it offers for the identification to be acceptably definite (e.g. pants, shirts, bras, shorts).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The underlined wording in the identification “headwear, hats, caps, visors, hoods, berets.” is overly broad in that it could include goods in other international classes because the identification is written such that “caps” and “visors” are not clarified as types of “headwear” in the nature of fashion clothing rather than as
“surgical caps” in Class 10 for medical clothing and “visors for helmets” in Class 9 for safety equipment, to provide a couple of examples.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Therefore, the identification must be amended to clarify the goods are in the nature of “headwear” as provided below.

Alternatively, if applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.  Proper classification of goods is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

The underlined wording in the identification “wristbands” is overly broad in that it could include goods in other international classes such as “Anti-nausea wristbands” in Class 10 for medical equipment, to provide a couple of examples.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Therefore, the identification must be amended to clarify the particular goods offered, and classify the goods accordingly.

 

The wording “bandannas” and “boxershirts” in the identification of goods appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “bandanas” and “boxer shorts.”

 

The underlined wording in the identification “masquerade” is overly broad in that it could include goods in other international classes such as “masquerade costumes” in Class 25 for fashion clothing, including fashion costumes, and “masquerade masks” in Class 28 for goods in the nature of toys, to provide a couple of examples.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Therefore, the identification must be amended to clarify the particular goods offered, and classify the goods accordingly.

 

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

 

Class 9 –	“Visors for helmets.”
Class 10 –	“Surgical caps; Anti-nausea wristbands”
Class 25 –	“Clothing for men, women and children, namely, exercise wear, namely, warm up suits, jogging suits, sweat suits, sweat pants and sweatshirts, and bodysuits, leotards, leg warmers, swimwear, bathing suits, beach and bathing cover ups, suits, slacks, trousers, pants, jeans, shorts, sweat shorts, gym shorts, tops, jackets, coats, sport coats, shirts, sport shirts, T-shirts, knit shirts, polo shirts, pullovers, sweaters, vests, tank tops, blazers, jumpsuits, playsuits, overcoats, parkas, wind resistant jackets, leather jackets, footwear, shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals; Headwear, namely, hats, caps, visors, hoods, berets; Headbands, sweatbands, wristbands as clothing, ear muffs, neckwear, neckties, scarves, bandanas, sleepwear, robes, pajamas, nightshirts, rainwear, gloves, mittens, galoshes, loungewear, underwear, briefs, underpants, boxer shorts, undershirts, suspenders, hosiery, socks, belts, sweat shirts, and masquerade costumes.”
Class 28 –	“Masquerade masks.”

Additions to the Identification Not Permitted

 

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 and/or services 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.

 

REQUIREMENT TO CLARIFY THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

 

The application identifies goods that may be classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

ADVISORY:  Multiple-Class Application Requirements for a Section 1(b) Filing Basis

 

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 Section 1(b):

 

(1)        List the goods 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 4 classes; however, applicant submitted a fee sufficient for only 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FILING FEES FOR ADDED CLASSES

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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.

Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms. 

If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.

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.  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.  

ASSISTANCE

Please call or email the assigned trademark examining attorney with questions about this Office action.

 

 

/Tiffany Y. Chiang/

Trademark Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@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 6/18/2019 FOR U.S. APPLICATION SERIAL NO. 88367329

 

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 6/18/2019, 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. 

 

/Tiffany Y. Chiang/

Trademark Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@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.