Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  March 18, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on March 12, 2020 in connection with this application.  The assigned trademark examining attorney issued a final action instead of on a non-final action.  See TMEP §§706, 711.02.

 

This Office action is in response to applicant’s communication filed on March 3, 2020.

 

In a previous Office action(s) dated October 7, 2019, applicant was required to satisfy the following requirement(s): amend the identification of goods and address multiple-class application requirements.  Applicant satisfied the requirements raised in the October 7, 2019 Office action.

The trademark examining attorney inadvertently overlooked additional classification and identification of goods and multiple-class application requirements.  Applicant must now address those issues.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

SUMMARY OF ISSUES:

·       Classification and Identification of Goods Requirement

·       Multiple-Class Application Requirements

 

 

CLASSIFICATION AND IDENTIFICATION OF GOODS REQUIREMENT

Applicant must clarify the wording “ties” in the identification of goods in International Class 25 because it is indefinite and too broad. See 37

C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, plastic twist ties are in International Class 21 and ties as clothing are in International Class 25.

 

Additionally, applicant has classified the following good in International Class 14: “Nutcrackers of precious metal” and the following good in International Class 25: “Boot accessories, namely, decorative iron fitting covers, being appliqués.” However, the proper classification for each item is as follows: Class 21: “Nutcrackers of precious metal” and Class 26: “Boot accessories, namely, decorative iron fitting covers, being appliqués.”

 

Applicant may substitute the following wording, if accurate:

 

Class 6: Figurine statuettes of imitation gold

 

Class 9: Spectacles, hour glasses, sunglasses

 

Class 14: Badges of precious metal; agates; jewelry, namely, amulets, pins, ingots of precious metal; jewelry, namely, charms; jewelry of amber; boxes for sweetmeats of precious metal; jewelry, namely, brooches; busts of precious metal; chronometer timepieces; chronoscopes; diamonds; boxes of precious metal; electric clocks; vegetable ivory jewelry; jewelry cases of precious metal; figurine statuettes of precious metal; gold wire jewelry; objects of imitation gold being imitation jewelry; hat ornaments of precious metal; watch chains; baskets of precious metal for household purposes; works of art of precious metal; jewelry, namely, medals and medallions; collectible coins; needle-shaped jewelry ; decorative pins, namely, ornamental pins being jewelry; needles in the form of jewelry of precious metal; nutcrackers of precious metal; identity plates of precious metal; jewelry boxes of precious metal; sundials; spinel precious stones; statuettes of precious metal; stopwatches; paste jewelry, namely, semi-wrought precious imitation stone; commemorative statuary cups of precious metal; clocks and watches; pendulum clocks; alarm clocks

 

Class 18: bags for campers, namely, all-purpose carrying bags for blankets and for covering of skins and furs; attaché cases; boxes of leather or leather board; net bags, namely, mesh shopping bags and shopping bags made of canvas or leather; leather ware, namely, animal skins, fur pelts; umbrella cases; game bags, namely, animal game bags; bags for travel; suitcases; luggage trunks; umbrellas; school satchels; school bags; parasols; walking sticks; shopping bags with wheels attached; haversacks; tool bags of leather or kid, sold empty

 

Class 21: Nutcrackers of precious metal

 

Class 22: Plastic twist ties

 

Class 25: Suits; baby wear, namely, layettes for clothing; swimsuit; bathing trunks; bathrobes; swimming caps; bath sandals; bath slippers; neckerchief bandanas; clothing of imitation leather, namely, shirts, polo shirts, sweatshirts, sport shirts, tie shirts, over shirts, T- shirts; blouses; tank tops; blouson; skirts; head scarves; neck scarves; square scarves; stoles; pants; sports jerseys; beach wear and swimwear; swim trunks; swim suits; bikinis; swim shorts; beach shorts; Bermuda shorts; bathing gowns; beach suits and beach gowns; motorists' clothing, namely, gloves, pants, headwear; clothing and clothing of paper, namely, sport shirts, tie shirts, dress shirts, over shirts; pullovers; vests; shorts; jeans shirts; jeans blouses; jeans jackets; jeans overalls; jeans skirts; gym suits; track suits; track suit trousers; jogging suits; jogging trousers; jogging jackets; jogging pullovers; jogging blousons; tennis wear; Boot accessories, namely, decorative iron fitting covers, being appliqués, for boots; bodies, namely, body shapers; brassieres; garments, namely, belts; clothing for gymnastics, namely, leotards; gymnastic shoes; ankle boots in the nature of half-boots; scarves; gloves; slippers; shirt fronts; shirts; braces in the nature of suspenders; hats; clothing, namely, jerseys; designer clothing, namely, shirts, polo shirts, sweatshirts, sport shirts, tie shirts, dress shirts, over shirts, T-shirts; headgear, namely, hats and baseball caps; camisoles; corsets being clothing; ties as clothing; bibs not of paper; clothing of leather, namely, shirts, polo shirts, sweatshirts, sport shirts, tie shirts, dress shirts, over shirts, T-shirts; underwear; corselets; dressing gowns; muffs; caps being headwear; outer clothing, namely, earmuffs; clothing articles, namely, combinations; pelerines; fur coats; muffs and jackets; petticoats; jumpers; pajamas; cyclists' clothing, namely, cyclists jerseys; raincoats; sandals; veils; wimples; knickers; lace-up boots; shoes; footwear; aprons; ski boots; briefs; socks; sock suspenders; boots for sports; boots; headbands; esparto shoes or sandals; shawls; beachwear; beach shoes; garters; stockings; tights; sweaters; T-shirts; togas; knitwear, namely, skirts and tops; underpants; body linen; linen clothing, namely, shirts, polo shirts, sweatshirts, sport shirts, tie shirts, dress shirts, over shirts, T- shirts; wetsuits for water-skiing; waistcoats; hosiery

 

Class 26: Boot accessories, namely, decorative iron fitting covers, being appliqués

 

Applicant may amend the identification 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. Generally, any deleted goods may not later be reinserted. See 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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 8 classes; however, applicant submitted a fee(s) sufficient for only 5 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more  information about these changes, see the Mandatory Electronic Filing webpage.

 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 18, 2020 for

U.S. Trademark Application Serial No. 88410314

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 18, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”