To: | TROPHY (TM-CT@cantorcolburn.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88371997 - BERING - GER3153TUS |
Sent: | 6/18/2019 12:59:51 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88371997
MARK: BERING
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: TROPHY
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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).
However, applicant must respond to the following requirement.
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
Applicant has classified “motorcycle gloves” in International Class 9; however, the proper class for these goods is International Class 25. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Applicant must adopt the appropriate international classification number for the goods identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
Moreover, applicant’s use of the word “protective” in connection with “jackets, coats, sweatshirt, and pants, for use in motorsports” and “shoes and boots, for use in motorsports” creates an ambiguity that must be resolved. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Protective clothing is clothing that protects the wearer from death or severe bodily injury. Thus, the USPTO classifies protective clothing for protection against accidents, irradiation, and fire in International Class 9. However, general clothing items not specifically designed to protect the wearer from death or severe bodily injury are classified in International Class 25, which is why the USPTO classifies such goods as motorcycle boots, motorcycle rain suits, and motorcycle jackets in that class. Here, it is not clear if applicant’s clothing items are “protective” in the sense that they protect against death or severe bodily injury (indeed, it is not clear how a sweatshirt could serve this function), and therefore clarification is required. If the goods do not serve to protect against death or severe bodily injury but are merely meant to be used for a more general protection while riding a motorcycle, applicant should delete the ambiguous word “protective” from the identification.
Finally, the wording “gloves, namely, motorcycle” and “helmets, namely, motorcycles” is unclear as to what goods applicant is actually providing, especially when viewed as “gloves, namely, motorcycle and motorcycle gloves” and “helmets, namely, motorcycles and motorcycles helmets.” See TMEP §1402.01. If “gloves, namely, motorcycle” and “helmets, namely, motorcycles” refers to “motorcycle gloves” and “motorcycle helmets,” respectively, then applicant should delete the confusing wording “gloves, namely, motorcycle” and “helmets, namely, motorcycles” because it is redundant and unnecessary, given that applicant lists “motorcycle gloves” and “motorcycle helmets” in the identification. See generally TMEP §§1402.01, 1402.01(a).
The following are suggested formats for the amended identifications of goods:
CLASS 9: Motorcycle helmets
CLASS 25: Clothing, namely, jackets, coats, sweatshirts, and pants, for use in motorsports; footwear, namely, shoes and boots, for use in motorsports; motorcycle gloves
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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. 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.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Therefore, in response to the requirement that applicant amend the identification of goods, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(a) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).
(b) Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). 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.
See 15 U.S.C. §§1051(b), 1112; 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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.
RESPONSE REQUIRED
For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal 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.