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: 5/30/2019

 

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

 

SUMMARY OF ISSUES:

 

• Section 2(d) Likelihood of Confusion Refusal
• Identification of Goods is Indefinite - Applies to Specific Goods in Class 12 ONLY

 

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. 4326609.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 and/or services 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 and/or services.  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 [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

In this case, applicant’s mark is RED TITAN (standard character) for goods listed as “Bicycles; Cycles; Mini-bicycles; Scooters; Tricycles; Unicycles; Wagons; Go carts; Push scooters; All-terrain vehicles; Vehicles and conveyances; Parts and fittings for vehicles; Parts and fittings for bicycles, cycles, scooters, tricycles, unicycles, wagons, go carts, push scooters, all-terrain vehicles; Bicycle, cycle, scooter, tricycle, unicycle wagon, go cart, push scooter and all-terrain vehicle accessories; Bicycle and cycle hubs; Bicycle and cycle stabilizers; Bicycle and cycle stands; Bicycle and cycle frames; Bicycle and cycle spokes; Bicycle and cycle wheels; Bicycle and cycle seats; Bicycle and cycle saddles; Bicycle and cycle seat covers; Bicycle and cycle mudguards; Bicycle and cycle horns; Bicycle and cycle bells; Bags for bicycles and cycles; Luggage carriers for bicycles and cycles; Panniers, side bags, saddle bags for cycles and bicycles; Baskets adapted for cycles and bicycles; Water bottle holders for bicycles and cycles; Tire pumps; Tire repair patches; Tire pumps; Handle bars; Stands for bicycles, cycles and scooters; Bicycle and cycle mounted pet seats; Strollers; Stroller hoods and covers; Pet strollers; Children's car seats; Bicycle and cycle racks for vehicles; Fitted car seat covers; Fitted fabric covers for vehicle seat belts; Vehicle seat protectors; Vehicle seat cushions; Safety seats for use in cars; Child carrying trailers for use while exercising; Novelty license plate holders” in International Class 12.

 

Registrant’s mark is TITAN (stylized) for goods listed as “Bicycles; Mountain bicycles” in International Class 12.

 

Here, applicant’s mark and registrant’s mark share the identical dominant and/or only source-indicating wording “TITAN”. As such, the marks are confusingly similar in general sound, appearance, meaning, connotation and commercial impression. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Furthermore, the examining attorney notes that applicant’s mark, namely, RED TITAN incorporates the entirety of registrant’s marks, namely, TITAN. However, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

Additionally, the examining attorney points out that descriptive matter that is subject to a disclaimer requirement, such as the term “RED” in the applied-for mark, is properly accorded less weight in a Trademark Act Section 2(d) likelihood of confusion analysis than the dominant portion of a mark. 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 and/or services 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). [See requirement entitled “Disclaimer of Descriptive Wording” below].

 

Moreover, the examining attorney points out that a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Finally, the examining attorney points out that where the goods of an applicant and registrant are “similar in kind and/or closely related,” as is true in the instant case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Accordingly, applicant’s mark and registrant’s mark are sufficiently similar, such that consumer confusion in the marketplace is likely.

 

Comparison of the Goods

 

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 and/or services] 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).

 

In this case, applicant’s goods listed as “Bicycles; Cycles; Mini-bicycles; Scooters; Tricycles; Unicycles; Wagons; Go carts; Push scooters; All-terrain vehicles; Vehicles and conveyances; Parts and fittings for vehicles; Parts and fittings for bicycles, cycles, scooters, tricycles, unicycles, wagons, go carts, push scooters, all-terrain vehicles; Bicycle, cycle, scooter, tricycle, unicycle wagon, go cart, push scooter and all-terrain vehicle accessories; Bicycle and cycle hubs; Bicycle and cycle stabilizers; Bicycle and cycle stands; Bicycle and cycle frames; Bicycle and cycle spokes; Bicycle and cycle wheels; Bicycle and cycle seats; Bicycle and cycle saddles; Bicycle and cycle seat covers; Bicycle and cycle mudguards; Bicycle and cycle horns; Bicycle and cycle bells; Bags for bicycles and cycles; Luggage carriers for bicycles and cycles; Panniers, side bags, saddle bags for cycles and bicycles; Baskets adapted for cycles and bicycles; Water bottle holders for bicycles and cycles; Tire pumps; Tire repair patches; Tire pumps; Handle bars; Stands for bicycles, cycles and scooters; Bicycle and cycle mounted pet seats; Strollers; Stroller hoods and covers; Pet strollers; Children's car seats; Bicycle and cycle racks for vehicles; Fitted car seat covers; Fitted fabric covers for vehicle seat belts; Vehicle seat protectors; Vehicle seat cushions; Safety seats for use in cars; Child carrying trailers for use while exercising; Novelty license plate holders” International Class 12 encompass registrant’s goods listed as “Bicycles; Mountain bicycles” in International Class 12, as applicant’s goods listed in part as “Bicycles” are identical to registrant’s goods listed as “Bicycles” and are broad enough to encompass registrant’s goods listed as “Mountain bicycles” in International Class 12. Furthermore, many of applicant’s listed goods feature structural parts, accessories and fittings for bicycles which are encountered by consumers in the same channels of trade as bicycles.

 

Third-Party Registrations Suggest Goods May Emanate from Single Source

 

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 and as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, “Bicycles,” “Mountain bicycles,” “Unicycles,” “Tire pumps” and “Cycle bells”, 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).

 

Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s goods emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d).

 

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

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods is Indefinite – Applies to Specific Goods in Class 12 ONLY

 

The wording “Cycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 12 (e.g., “Motorcycles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Scooters” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the specific type of vehicle scooters (e.g., “Scooters, namely, {indicate specific type of vehicle scooters, e.g., mobility scooters, motor scooters, water scooters, or push scooters}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Tricycles” in the identification of goods is indefinite and must be clarified because applicant must specify that said goods consist of “Tricycles not being toys” in order for said goods to be considered sufficiently definite and properly classified in International Class 12.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Vehicles and conveyances” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 12 (e.g., “Vehicles and conveyances, namely, {specify common commercial name in Class 12, e.g., automobiles, sport cars}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Parts and fittings for vehicles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 12 (e.g., “Structural parts and fittings for land vehicles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Parts and fittings for bicycles, cycles, scooters, tricycles, unicycles, wagons, go carts, push scooters, all-terrain vehicles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 12 (e.g., “Structural parts and fittings for bicycles, {specify type of cycles, e.g., motorcycles}, {specify type of scooters, e.g., motor scooters}, tricycles not being toys, unicycles, wagons, go carts, push scooters, all-terrain vehicles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle, cycle, scooter, tricycle, unicycle wagon, go cart, push scooter and all-terrain vehicle accessories” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 12 (e.g., “Bicycle, {specify type of cycle, e.g., motorcycle}, {specify type of scooter, e.g., motor scooters}, tricycle not being a toy, unicycle, wagon, go cart, push scooter and all-terrain vehicle accessories, namely, {specify common commercial name in Class 12 or delete}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle hubs” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in Class 12 (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} wheel hubs”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “Bicycle and cycle stabilizers” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of “cycle stabilizers” (e.g., “Bicycle and {specify type of cycle, e.g., unicycle} stabilizers”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle stands” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of “cycle stands” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} stands”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle frames” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle frames” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle frames}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

The wording “Bicycle and cycle spokes” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle spokes” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} spokes”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle seats” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle seats” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} seats”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle saddles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle saddles” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} saddles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle seat covers” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods (e.g., “Fitted bicycle and {specify type of cycle, e.g., motorcycle} seat covers”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle mudguards” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle mudguards” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} mudguards”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle horns” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “cycle horns” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} horns”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bags for bicycles and cycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 12 (e.g., “Pannier bags for bicycles and {specify type of cycles, e.g., motorcycles}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Luggage carriers for bicycles and cycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said “Luggage carriers for…cycles” (e.g., “Luggage carriers for bicycles and {specify type of cycle, e.g., motorcycles}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Panniers, side bags, saddle bags for cycles and bicycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of “Panniers” and the type of “cycles” (e.g., “Pannier bags, side bags, saddle bags for {specify type of cycle, e.g., motorcycles} and bicycles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Baskets adapted for cycles and bicycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “cycles” (e.g., “Baskets adapted for {specify type of cycles, e.g., motorcycles} and bicycles”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Water bottle holders for bicycles and cycles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “cycles” (e.g., “Water bottle holders for bicycles and {specify type of cycles, e.g., motorcycles}”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 12 for “Tire pumps.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

The wording “Stands for bicycles, cycles and scooters” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “cycles” (e.g., “Stands for bicycles, {specify type of cycles, e.g., motorcycles} and scooters”)  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle mounted pet seats” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “cycle” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} mounted pet seats”).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Bicycle and cycle racks for vehicles” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the type of “cycle racks” (e.g., “Bicycle and {specify type of cycle, e.g., motorcycle} racks for vehicles”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Note: The examining attorney sets forth below, the suggested changes to the identification of goods in bold and italicized font.

 

Applicant may substitute the following wording, if accurate: 

 

“Bicycles; {Specify type of cycles, e.g., Motorcyles}; Mini-bicycles; Scooters, namely, {indicate specific type of vehicle scooters, e.g., mobility scooters, motor scooters, water scooters, or push scooters}; Tricycles not being toys; Unicycles; Wagons; Go carts; Push scooters; All-terrain vehicles; Vehicles and conveyances, namely, {specify common commercial name in Class 12, e.g., automobiles, sport cars}; Structural  parts and fittings for vehicles; Structural parts and fittings for bicycles, {specify type of cycles, e.g., motorcycles}, {specify type of scooters, e.g., motor scooters}, tricycles not being toys, unicycles, wagons, go carts, push scooters, all-terrain vehicles; Bicycle, {specify type of cycle, e.g., motorcycle}, {specify type of scooter, e.g., motor scooters}, tricycle not being a toy, unicycle, wagon, go cart, push scooter and all-terrain vehicle accessories, namely, {specify common commercial name in Class 12 or delete}; Bicycle and {specify type of cycle, e.g., motorcycle} wheel hubs; Bicycle and {specify type of cycle, e.g., unicycle} stabilizers; Bicycle and {specify type of cycle, e.g., motorcycle} stands; Bicycle and {specify type of cycle, e.g., motorcycle frames}; Bicycle and {specify type of cycle, e.g., motorcycle} spokes; Bicycle and cycle wheels; Bicycle and {specify type of cycle, e.g., motorcycle} seats; Bicycle and {specify type of cycle, e.g., motorcycle} saddles; Fitted bicycle and {specify type of cycle, e.g., motorcycle} seat covers; Bicycle and {specify type of cycle, e.g., motorcycle} mudguards; Bicycle and {specify type of cycle, e.g., motorcycle} horns; Bicycle and cycle bells; Bags for bicycles and cycles; Luggage carriers for bicycles and cycles; Pannier bags, side bags, saddle bags for {specify type of cycles, e.g., motorcycles} and bicycles; Baskets adapted for {specify type of cycles, e.g., motorcycles} and bicycles; Water bottle holders for bicycles and {specify type of cycles, e.g., motorcycles}; Tire pumps; Tire repair patches; Tire pumps; Handle bars; Stands for bicycles, {specify type of cycles, e.g., motorcycles} and scooters; Bicycle and {specify type of cycle, e.g., motorcycle} mounted pet seats; Strollers; Stroller hoods and covers; Pet strollers; Children's car seats; Bicycle and {specify type of cycle, e.g., motorcycle} racks for vehicles; Fitted car seat covers; Fitted fabric covers for vehicle seat belts; Vehicle seat protectors; Vehicle seat cushions; Safety seats for use in cars; Child carrying trailers for use while exercising; Novelty license plate holders”; in International Class 12.

 

Scope of Goods (Advisory)

 

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 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

 

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.

 

Furthermore, if applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.

 

 

 

 

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.  

 

 

 

 /Brian P. Callaghan/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

Ph: (571) 272-4906

brian.callaghan@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 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88375836

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/30/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.