Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  December 04, 2019

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 88042903

 

Refusal(s) and/or requirement(s) maintained and continued.  The following refusal(s) and/or requirement(s) is/are maintained and continued: 

 

•        Section 2(d) Refusal – Likelihood of Confusion

•        Identification Requirement

•        Scope of Foreign Registration Requirement

 

See TMEP §713.02. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

IDENTIFICATION REQUIREMENT

 

Applicant has identified the following goods:

 

International Class 9: “Headphones; cases for mobile phones and personal electronic media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants; accessories for mobile phones and personal media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants, namely, chargers, adaptors, data storage cards, protective coverings, power banks, tripods, stands, and grips; covers, holders, carrying cases and straps for mobile phones and personal media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants”

 

International Class 18: “Purses; wallets; umbrellas; travel cases; coin, credit card, business card, membership and loyalty card, banknote, label, ticket, document, and key holders; garment carriers, baby carrying bags, and animal carriers; carry-all and all-purpose carrying bags; handbags; parasols; all of the foregoing excluding tote bags”

 

The wording “coin, membership and loyalty card, ticket, document, and key holders” in the identification of goods is overly broad and must be clarified, as the goods could be classified in more than one International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Coin holders in the nature of wallets are properly classified in International Class 18, while coin holders belong in International Class 16. Similarly, membership and loyalty card holders belong in International Class 16 with other gift card holders. Document holders also belong in International Class 16. Furthermore, ticket holders and key holders are misclassified. Non-metal travel ticket holders belong in International Class 20, and lottery ticket holders belong in International Class 28. Non-metal key holders similarly belong in International Class 20. Finally, the wording “business card holder” and “garment carriers” is indefinite and must be clarified, because applicant must specify the nature of the business card holder and garment carriers.

 

If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:

 

International Class 9: “Headphones; cases for mobile phones and personal electronic media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants; accessories for mobile phones and personal media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants, namely, chargers, adaptors, data storage cards, protective coverings, power banks, tripods, stands, and grips; covers, holders, carrying cases and straps for mobile phones and personal media devices in the nature of media players, digital media streaming devices, computers, and personal digital assistants”

 

International Class 16: “Coin holder, membership and loyalty card holder; document holder”

 

International Class 18: “Purses; wallets; umbrellas; travel cases; coin, credit card, business card holder in the nature of card cases, membership and loyalty card, banknote, luggage label, ticket, document, and key holders; garment carriers for travel, baby carrying bags, and animal carriers; carry-all and all-purpose carrying bags; handbags; parasols; all of the foregoing excluding tote bags”

 

International Class 20: “Non-metal train and bus ticket holders; non-metal key holder

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to include associated International Classes. Applicant may also choose to add some but not all Classifications, or limit the goods as specified to include only the goods in the current Classifications. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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.

 

Applicant should note the additional requirements pertaining to multiple-class applications, as set forth below.

 

MULTI-CLASS APPLICATION REQUIREMENTS

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 Sections 1(b) and 44:

 

(1)       List the goods and/or services 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

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.

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Megan Mischler/

Trademark Examining Attorney

Law Office 127

(571) 272-9997

megan.mischler@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 04, 2019 for

U.S. Trademark Application Serial No. 88389888

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Megan Mischler/

Trademark Examining Attorney

Law Office 127

(571) 272-9997

megan.mischler@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”