To: | Valiant Entertainment LLC (nzoubek@rlfllp.com) |
Subject: | U.S. Trademark Application Serial No. 88403972 - SHADOWMAN - N/A |
Sent: | July 11, 2019 02:32:03 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88403972
Mark: SHADOWMAN
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Correspondence Address: |
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Applicant: Valiant Entertainment LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 11, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On July 10, 2019, the examining attorney and Nancy Zoubek discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
The identification of goods for International Class 24 contains wording that must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In particular, the wording “Household textile goods” is overly broad because it could include charms in International Class 20, such as textile window blinds and ornaments, and in International Class 24, such as bed or table linens.
Additionally, the wording “blankets” is too broad because it could include a diverse array of blankets, including fire blankets in International Class 9; medical blankets in International Class 10; electric blankets in International Class 12; baby stroller blankets in International Class 12; bed blankets in International Class 24; and yoga blankets in International Class 28.
For example, applicant may adopt the following wording, if accurate:
International Class 9: Fire blankets
International Class 10: Blankets for medical purposes
International Class 11: Electric blankets not for medical use
International Class 12: Blankets specially adapted for baby strollers
International Class 20: Household textile goods, namely, {specify Class 20 goods, e.g., indoor window blinds of textile, ornaments made of textile};
International Class 24: Household textile goods, namely, {specify Class 24 goods, e.g., textile fabrics for use in making household furnishing, textile curtains, textile coasters}; bed linens, namely, bed blankets, bed sheets, bed sheet sets; pillow cases, comforters, duvet covers, pillow shams, bed covers, bedspreads, bed skirts, bed spreads; blankets, namely, {specify Class 24 goods, e.g., bed blankets, blanket throws, children’s blankets, pet blankets}; throws; window curtains; curtains of textile or plastic; diaper changing cloths for babies; diaper changing pads not of paper; place mats, not of paper; plastic table covers; towels; wash clothes; shower curtains; table cloths not of paper; table mats not of paper; textile wall hangings, namely, cloth posters; towels of textile; throw rugs; kitchen linens, namely, dish cloths, kitchen towels
International Class 28: Yoga blankets, mediation blankets
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.
Multiple-Class Application Requirements
(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 seven classes; however, applicant submitted a fee(s) sufficient for only one 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Advisory on Moving Goods and Services between Companion Applications
Section 1402.08 of the Trademark Manual of Examining Procedure sets forth the conditions under which, the applicant may amend to move items of goods or services from one application to another if an applicant has filed separate applications to register the same mark.
In particular, the application from which the item is to be moved must be filed on or before the filing date of the application to which it is to be moved. TMEP §1408.08.
The amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. Id.
Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette. Id.
Goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. In applications under §1, the applicant may request to move goods/services under a §1(b) basis to a companion application that includes goods/services in the same class, but which are under a §1(a) basis, or vice versa. Id.
The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. Id. It is noted that the amendments may be accomplished with an Examiner’s Amendment if both of the subject applications are being handled by the same examining attorney.
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
How to respond. Click to file a response to this nonfinal Office action.
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.
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE