Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  August 01, 2019

 

 

Applicant must address issues shown below.  On June 28, 2019, the examining attorney and the above applicant or attorney discussed the issues below.  Applicant must timely respond to these issues.  The undersigned regrets not including the identification/classification issues in the initial Office Action.  Please also note, the applicant’s amended description and complete foreign registration documents are acceptable.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

I.  IDENTIFICATION OF GOODS/SERVICES - Indefinite in Part:

 

As noted, the identification of goods and/or services is unacceptable as indefinite in large part because it lacks sufficient specificity and because the goods/services fall into additional classes.  As a general matter, due to the great deal of indefiniteness for a wide variety of goods, not all possible options are suggested below.  However, please note that, applicant must:

 

-        specify the nature/type for numerous goods suggested below,

 

-        delete the duplicative wording (i.e., “galoshes; gaiters” in IC 25 “Skateboards; Skates; shin guards (sports articles); treadmills; dumb-bells; kettle bells; free weights; medicine balls; gym balls; gym bars; sit up benches; exercise bikes; elliptical machines; weight benches; weight towers; trampolines; Fishing equipment; swimming jackets; and floats for bathing and swimming” in IC 28 , etc.),

 

-        delete the repeated and unnecessary inclusion of “(clothing)” in IC 25, as well as, the parenthesis throughout (as they are not permitted in an identification as used),

 

-        clarify what is meant by “playing bowls; bowls (games); bowls bags; sporting equipment for use in gymnastics, namely,…exercise and gymnastic banners” in IC 28,

 

-        amend “covers for animals” in IC 18 as suggested below or it will be beyond the scope of the goods in the foreign registration and may only proceed solely to Section 1(b), and

 

-        etc. (as discussed in great detail below).

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

As such, applicant must amend the identification to make it definite along the lines suggested below.  Accordingly, applicant may adopt the following identification, if accurate:

 

-        Wax for skis; Prepared wax for skis; Surfboard wax; Skateboard wax, in International Class 4;

 

-        Scrapers for skis; parts and fittings for all the aforesaid goods, in International Class 8;

 

-        Mouthguards; protective eyewear for squash and racketball; protective gloves for racketball; breathing tubes for divers; mouth guards for athletic use; parts and fittings for all the aforesaid goods, in International Class 9;

 

-        Bags specially adapted for cycles; pannier bags for bicycles; baby and child carriers, namely, strollers; parts and fittings for the aforesaid goods,in International Class 12;

 

-        Decorative key fobs made of leather incorporating key rings; parts and fittings for the aforesaid goods, in International Class 14;

 

-        Stationery-type portfolios; __________ (please specify, for example, paper, plastic, etc.) shopping bags; __________ (please specify, for example, desktop business, plastic baseball, etc.) card holders; parts and fittings for the aforesaid goods, in International Class 16;

 

-        Leather and imitations of leather, and goods made of these materials and not included in other classes, namely, __________ (please specify, for example, bags, pouches, etc.); skins and hides; luggage,  __________ (please specify, for example, leather, travel, etc.) cases,[1] __________ (please specify, for example, travel, luggage, etc.) trunks,[2] travelling bags, travelling cases, carry-on luggage, overnight luggage, bags for travel accessories, shoe bags for travel and garment bags for travel;[3] briefcases, document cases and briefcase-type portfolios; school bags and school satchels; bags, namely, holdalls, haversacks backpacks, rucksacks, knapsacks, handbags, shoulder bags, clutch bags, tote bags, sports bags, athletic bags, beach bags, __________ (please specify, for example, textile, mesh, etc.) shopping bags, record bags, namely, carrying cases for documents, belt bags, toiletry bags sold empty;[4] hip pouches; belts for luggage;[5] wallets, purses, __________ (please specify, for example, textile, leather, etc.) pouches[6] and key cases; baby and child carriers worn on the body; camping sleeping bags; frames for handbags, umbrellas or parasols; fastenings as leather straps and straps of leather; credit card holders; umbrellas, golf umbrellas, golf umbrella seats, parasols, canes and walking sticks; whips, harnesses and saddlery; Attaché cases; card cases; clothing for pets; collars for animals; covers for animals made of leather or imitations of leather; music cases; net bags for shopping; sling bags for carrying infants;  leather straps for skates; suitcase handles; umbrella covers; umbrella handles; umbrella sticks; vanity cases sold empty;[7] walking cane handles; walking stick handles; walking stick seats; wheeled shopping bags; waist pouches; business card cases; parts and fittings for the aforesaid goods, in International Class 18;

 

-        Clothing, namely, __________ (please specify, for example, shirts, pants, etc.); footwear; headgear, namely, __________ (please specify, for example, hats, caps, etc.); aprons; ascots; babies pants; bandanas; neckerchiefs; bath robes; bath sandals; bath slippers; bathing caps; bathing drawers; bathing suits; bathing trunks; beachwear; beach shoes; belts; berets; bibs not of paper; necklets, namely, boas; bodices; lingerie; boot uppers; boots for sports other than ski; braces for clothing, namely, suspenders; brassieres; breeches for wear; camisoles; cap peaks; caps; headwear; chasubles; clothing for gymnastics, namely, __________ (please specify, for example, shoes, tights, etc.); clothing of imitations of leather, namely, __________ (please specify, for example, shoes, jackets, etc.); clothing of leather, namely, __________ (please specify, for example, shoes, jackets, etc.); coats; collar protectors, namely, __________ (please specify, for example, guards, liners, etc.); collars; combinations; corselets; corsets as underclothing; cuffs; cyclists clothing, namely, __________ (please specify, for example, jerseys, pants, etc.); detachable collars; drawers as clothing; dress shields; dresses; dressing gowns; ear muffs; esparto shoes or sandals; fishing vests; fittings of metal for footwear; football boots; football shoes; footmuffs not electronically heated; fur stoles; furs as clothing; gabardines; gaiter straps; gaiters; galoshes; garters; girdles; gloves; gymnastic shoes; half-boots; hat frames being hat skeletons; hats; headbands; headgear for wear, namely, __________ (please specify, for example, hats, caps, etc.); heelpieces for footwear; heelpieces for stockings; heels; hoods; hosiery; inner soles; jackets; stuff jackets; jerseys; jumper dresses; jumpers; pullovers; knitwear, namely, __________ (please specify, for example, shirts, sweaters, etc.); lace boots; clothing layettes; leg warmers; leggings; trousers; body linen; liveries; maniples; mantillas; masquerade costumes; hats as miters; mittens; money belts; motorists clothing, namely, __________ (please specify, for example, jackets, pants, etc.); muffs; neckties; non-slipping devices for footwear, namely, soles; outerclothing, namely, __________ (please specify, for example, jerseys, pants, etc.); overalls; overcoats; pants; paper clothing, namely, __________ (please specify, for example, aprons, gowns, etc.); paper hats; parkas; pelerines; pelisses; petticoats; pinafore dresses; pocket squares; pockets for clothing; ponchos; pullovers; pyjamas; ready-made clothing, namely, __________ (please specify, for example, shirts, pants, etc.); ready-made linings being parts of clothing; sandals; saris; sarongs; sashes for wear; scarfs; scarves; shawls; shirt fronts; shirt yokes; shirts; shoes; short-sleeve shirts; shoulder wraps; shower caps; singlets; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips as undergarments; smocks; sock suspenders; socks; soles for footwear; spats; sports jerseys; sports shoes; stocking suspenders; stockings; sweat-absorbent stockings; studs for football boots; stuff jackets as clothing; suits; sun visors as headwear; suspenders; sweat-absorbent underclothing, namely, underwear; sweaters; swimsuits; teddies as undergarments; tee-shirts; tights; tips for footwear; togas; top hats; topcoats; trouser straps; trousers; turbans; underclothing; anti-sweat underclothing; underpants; underwear; anti-sweat underwear; uniforms; veils; vests; headwear visors for hatmaking; waistcoats; waterproof clothing, namely, __________ (please specify, for example, shirts, pants, etc.); welts for footwear; wet suits for water-skiing; wimples; wooden shoes; wristbands as clothing; casual wear, namely, __________ (please specify, for example, shirts, pants, etc.); sports clothing, namely, __________ (please specify, for example, shirts, pants, etc.); outdoor and camping clothing, namely, __________ (please specify, for example, shirts, pants, etc.); formal wear, namely, __________ (please specify, for example, gowns, tuxedos, etc.); boots, walking boots, cycling shoes; salopettes; balaclavas,, in International Class 25;

 

-        Sports, namely, __________ (please specify, for example, gymnastic, karate, etc.) mats; parts and fittings for all the aforesaid goods, in International Class 27; and

 

-        Games and playthings, namely, __________ (please specify, for example, board games, basketballs, etc.); gymnastic apparatus not included in other classes; sporting articles, equipment and apparatus not included in other classes, namely, __________ (please specify, for example, tennis rackets, baseball bats, etc.); exercise and fitness apparatus and equipment, namely, __________ (please specify, for example, pulleys, weights, etc.); supporters, body protectors, body guards and body pads for sports, athletics and fitness; playground apparatus and equipment , namely, __________ (please specify, for example, climbing units, slides, etc.); decorations for Christmas trees; playing cards; __________ (please specify, for example, hockey, ice, etc.) skates; skateboards; bags specifically adapted for sports articles and equipment, namely, __________ (please specify, for example tennis rackets, fishing rods, etc.); fishing equipment, namely, __________ (please specify, for example, rods, tackle, etc.); equestrian equipment, namely, __________ (please specify, for example, hurdles, vaulting dividers, etc.); Golf clubs; Golf gloves; Golf tees; Golf bags; Golf balls; Golf __________ (please specify whether “putting” or “driving”) mats; Golf practice nets; Practice golf balls; Golf club covers; Golf ball markers; Golf tee bags; Golf training aids, namely, __________ (please specify, for example, a motorized golf chipping practice aid, a brace worn on the hand and wrist to control flipping of the hand in a golf swing, etc.); Golf club hoods; Golf ball spotters in the nature of markers; Golf ball retrievers; Golf club head covers; Articles for playing golf, namely, __________ (please specify, for example, golf clubs, golf balls, etc.); Stands for golf bags; golf accessories, namely, divot repair tools; golf implement, namely, putting practice mats; Golf practice apparatus, namely, __________ (please specify, for example, golf clubs, golf balls, etc.); Practice golf holes; Golf bags covers; golf accessories, namely, pitch mark repair tools; Golf swing alignment apparatus, namely, __________ (please specify, for example, weights for attachment to golf clubs for use as a golf swing aid, a brace worn on the hand and wrist to control flipping of the hand in a golf swing, etc.); Golf tee holders; golf equipment, namely, __________ (please specify, for example, golf clubs, golf balls, etc.); Skis; Ski edges; Ski covers; Ski sticks; touring ski climbing skins; Ski boards; Covers for ski bindings; Shaped covers for ski sticks; Ski bindings and parts therefor; Sole coverings for skis; coverings for skis, namely, seal skins; Bags especially designed for skis; snowboards and surfboards; Snowboards; Snowboard bindings; Bindings for alpine skis; Roller skis; Boards used in the practice of water sports; Skim boards; Surf skis; Surf boards; Surfboard leashes; Bags adapted to carry surfboards; Surfboard covers; Surfboard fins; Ice skate blades; Ice skates; Roller skates; Skating boots with skates attached; Bags for skateboards; Skateboard wheels; Toy roller skates; athletic protectors for all body parts; protectors and pads for the use in ski, snow, skate and surf sports; In-line skates; Snow shoes; Snow saucers; playthings, namely, snow sledges; Toy snow globes; skiing equipment, namely, __________ (please specify, for example, skis, ski bindings, etc.); skating equipment, namely, __________ (please specify, for example, ice skates, ice skate blades, etc.); Protectors and pads for arms, elbows, knees and wrists for cycling; stationary cycling machines; Sporting articles and apparatus for use in playing racket sports namely squash, badminton, tennis, table tennis, padel, racketball and __________ (please list any other racket sports), namely, __________ (please specify the sporting articles/apparatus, for example, rackets, balls, etc.); squash balls; shuttlecocks; tennis balls; table tennis balls; racketballs; padel balls; squash, badminton, tennis, racketball, padel and table tennis racket bags shaped to contain a racket; grip bands for squash, badminton, tennis, racketball, padel and table tennis rackets; head covers for squash, badminton, tennis, racketball, padel and table tennis rackets; squash rackets; badminton rackets; tennis rackets; table tennis rackets; racketball rackets; padel rackets; rackets for ball games; athletic equipment, namely, squash, badminton, racketball and tennis racket string protectors; strings for squash, badminton, racketball and tennis rackets; strings for rackets for ball games; tennis and table tennis nets; badminton nets; nets for games; tennis ball throwing machines; tapes for wrapping squash, badminton, racketball, padel and tennis racket handle grips; tapes for wrapping racket and bat grips; tables for playing table tennis; table tennis bats; vibration dampeners for tennis, squash and racketball rackets; Dumb-bells; kettle bells; free exercise weights; medicine balls; gym exercise balls; gym exercise bars; sit up benches; exercise bikes; stationary bikes; elliptical machines; treadmills; weight benches; weight towers specially adapted for holding exercise weights; trampolines; Footballs; football gloves; football goal posts and nets; playthings, namely, inflatable __________ (please specify, for example, soccer, football, etc.) goals; sports articles, namely, shin guards; tables for indoor football; miniature replica toy football kits; Inflatable float loungers or mats for recreational use in water; ball game equipment, namely, __________ (please specify, for example, baseball bats, tennis rackets, etc.); track and field equipment, namely, __________ (please specify, for example, hurdles, starting blocks, etc.); Cricket bags; cricket bats; leg guards, namely, cricket pads; protective padded body articles for use in playing cricket; protectors for elbows, arms, knees, legs, and groin for use in playing cricket; cricket balls; cricket stumps and bails; batting gloves; wicket-keeping gloves; cricket nets; bowling machines; Hockey sticks; ice hockey sticks; hockey balls; ice hockey pucks; hockey and ice hockey goals and nets; hockey and ice hockey gloves; chest protectors for hockey; goalie pads for hockey and ice hockey; Rugby balls; rugby goal posts; sporting equipment, namely, apparatus for use in training for the game of rugby, namely, __________ (please specify, for example, tackling dummies, rugby balls, etc.); Basketballs; basketball backboards; basketball baskets; basketball goals; basketball hoops; basketball nets; Volleyballs; volleyball nets; volleyball uprights; volleyball standards; volleyball net antennas; Netballs; netball goals; netball goalposts; netball nets; Aerobic equipment, namely, __________ (please specify, for example, steps, exercise weights, etc.); aerobic fitness belts; stationery cycles; elastic exercise bands; ankle weights; wrist weights; hurdles; javelins; shot puts; discus; poles for use in athletic jumps; vaulting poles; hammers for throws; starting blocks for sports; artificial fishing bait; fishing ground baits; freeze-dried fishing bait; bags adapted for fishing; bite sensors and indicators; fishing creels; fishing decoys; fishing floats; fishing gaffs; fishing hooks; fishing leaders; fishing lines; fishing line casts; fishing plumbs; fishing poles; fishing rods; fishing reels; cases for fishing poles, rods and reels; fishing rod rests and supports; fishing sinkers; fishing stools; fishing tackle; fishing tackle boxes; fishing tackle terminal; fishing weights; landing nets for fishing; lures for fishing; fishing rod blanks; spears for use in fishing; fishing tackle, namely, swivels; Harness for sailboards; __________ (please specify, for example, swimming, scuba, etc.) flippers; toy aqua guns; Swimming belts; Swimming jackets; Swimming kick boards; Floats for bathing and swimming; play articles, namely, swimming pools; swimming and diving games, namely, __________ (please specify, for example, water polo balls, flying discs, etc.); swimming and diving playthings, namely, __________ (please specify, for example, inflatable toys, noodles, etc.); bags specifically adapted for sports equipment and sports articles; swimming equipment, namely, __________ (please specify, for example, floats, pool rings, etc.); play articles, namely, inflatable swimming pools; play swimming pools; swimming equipment, namely, racing lanes; training aids for swimming, namely, __________ (please specify, for example, floats, pool rings, etc.); cords and bands for use in swimming; swimming equipment, namely, starting blocks; inflatable toys; swimming rings; inflatable swimming toys; swimming belts; swimming boards; swimming kick boards; flotation apparatus for swimming; floatation devices and supports for swimming; aqua gym accessories, namely, __________ (please specify, for example, inflatable toys, inflatable water play balls, etc.); dumbbells; weighted water wing swimming aids; __________ (please specify, for example, paddle ball game, surf, etc.) paddles; __________ (please specify, for example, table tennis, surfboard, etc.) hand paddles; swim fins; swimming floats; arm bands for swimming; inflatable diving toys; Baseballs; baseball gloves and mitts; baseball bats; baseball bat cases; baseball masks; chest protectors for baseball; baseball bases; Bowling balls; bowling pins; bowling gloves; bowling bags adapted for bowling balls; toy bowling mats; skittles; games, namely, skittles; sporting equipment for use in boxing, namely, boxing bags, boxing gloves, boxing swivels, punching balls for boxing practice; sporting equipment for use in gymnastics, namely, balance beams, gymnastic horizontal bars, gymnastic parallel bars, gymnastic vaulting horses, pommel horses, springboards for gymnastics; sporting equipment for use in playing the games, namely, badminton sets, ice hockey sticks, pucks, pads and gloves, lacrosse balls and sticks, table tennis paddles, balls and nets, croquet sets, quoits, flying discs and water polo balls; protective body gear for use in sport, namely, football knee pads and soccer shin pads; abdominal guards for athletic use; parts and fittings for all the aforesaid goods, in International Class 28.

 

PLEASE NOTE:  The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant.  Given the indefinite nature of the goods/services, the examining attorney is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action.  It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(e).

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please also note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

II.  CLASSIFICATION OF GOODS/SERVICES:

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Class(es) 4, 8, 9, 12, 14, 16, 18, 25, 27 & 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

III.  ADDITIONAL CLASSES:

 

If the applicant prosecutes this application as a combined, or multiple-class, application, the applicant must comply with each of the following:

 

(1)  The applicant must list the goods and/or services by their international class number (as listed above); and

         

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  The applicant has already submitted a filing fee for three classes.

 

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).

 

For an overview of the requirements for a Section 1(b)/Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.  Please also view the USPTO’s current fee schedule.

 

IV.  CONCLUSION:

 

If the applicant has any questions regarding this Priority Action, please telephone the assigned examining attorney.  All other issues are resolved.

 

Please note:  All of the above issue(s) may be more easily resolved by telephone.  The applicant is encouraged to call the undersigned, instead of submitting a written response, to expedite the application.

 

How to respond.  Click to file a response to this nonfinal Office action.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

karan.chhina@uspto.gov

 

 

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.

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.