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:  July 30, 2019

 

This Office action is supplemental to and supersedes the previous Office action issued on July 30, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted an advisory relevant to the mark in the subject application.  See TMEP §§706, 711.02. 

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated July 30, 2019.  The issue(s) raised in the previous July 30, 2019 Office action are as follow and are maintained: the Section 2(d) likelihood of confusion refusal, Trademark Act Section 2(e)(1) Refusal – Merely Descriptive, Supplemental Register Not Available, Amendment to Identification of Goods and/or Services Required, and Multi-Class Application Requirements

 

Applicant must respond to all issues raised in this Office action and the previous July 30, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SUMMARY OF ISSUES:

• Trademark Act Section 2(d) Refusal – Likelihood of Confusion
• Trademark Act Section 2(e)(1) Refusal – Merely Descriptive
• Supplemental Register Not Available
• Amendment to Identification of Goods and/or Services Required
• Multi-Class Application Requirements

 

Trademark Act Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5327902.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applied for mark is HOLOGRAPHIC for the following goods:

 

Class 25:

 

Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Clothing extension used to extend the normal size range of clothing items to accommodate pregnancy size changes; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing items, namely, adhesive pockets that may be affixed directly to the body as a decorative piece of clothing with utility; Clothing items, namely, adhesive pockets that may be affixed directly to the inside of clothing for storage and safekeeping of personal items; Clothing items, namely, blindfolds worn over the eyes; Clothing items, namely, gags worn over the mouth; Clothing layettes; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing wraps; Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, cowls and smoke ring scarves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Adult novelty gag clothing item, namely, socks; Babies' trousers; Baby layettes for clothing; Beachwear; Belts; Belts for clothing; Belts made out of cloth; Bibs not of cloth or paper; Bottoms as clothing; Children's cloth eating bibs; Children's and infants' cloth bibs; Collar guards for protecting clothing collars; Collar liners for protecting clothing collars; Collar protector pads for application to clothing collars; Collar protector strips for application to clothing collars; Combinations; Corsets being clothing; Corsets being foundation clothing; Drawers as clothing; Dusters in the nature of coats; Eyeshades as headwear; Fashion hats; Fingerless gloves as clothing; Foulards; Furs being clothing; Garrison caps; Gloves as clothing; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Head wraps; Headbands for clothing; Hijabs; Hoodies; Hoods; Infant and toddler one piece clothing; Infant wear; Infantwear; Jackets; Jackets incorporating backpacks; Jerseys; Kerchiefs; Leather belts; Leather harnesses worn by people as clothing; Loungewear; Mantles; Mufflers as neck scarves; Neckerchiefs; Neckerchieves; Nightwear; Non-disposable cloth training pants; Paper hats for use as clothing items; Pareos; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Parts of clothing, namely, underarm gussets; Perspiration absorbent underwear clothing; Pique shirts; Plimsolls; Pocket kerchiefs; Pocket squares; Pockets for clothing; Puttees and gaiters; Rainwear; Ready-made linings being parts of clothing; Sarongs; Scrub tops and pants not for surgical purposes; Shifts as clothing; Shirt inserts, namely, dickies; Short sets; Shoulder wraps; Shoulder wraps for clothing; Skapris; Ski wear; Skiwear; Sleepwear; Spats; Surf wear; Swaddling clothes; Swim wear; Swimwear; Tennis wear; Thong beachwear; Thong footwear; Thong underwear; Ties as clothing; Tops as clothing; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wimples; Women's clothing, namely, shirts, dresses, skirts, blouses; Wrist bands as clothing; Wristbands as clothing

 

The registered mark is HOLOGRAPHIC STICK for the following goods:

 

Class 3:

 

Make-up

 

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.

 

Similarity 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).

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). As such, the dominant element of the applied for mark and the registered mark is HOLOGRAPHIC. The sharing of this term creates a similar in sound, appearance, and meaning and thus creates a similar commercial impression.

 

Moreover, when compared in their entirety, the additional descriptive wording in the registered mark does not significantly alter the commercial impression. Rather, it creates the mistaken impression that applicant is a variant in a line of registrant’s products.

 

As such, the applied for mark is confusingly similar.

 

Relatedness of the Goods

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The attached Internet evidence, consisting of screen shots from Chanel, Gucci, and Givenchy, establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods and under the same mark.

 

Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes and registration is refused.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

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

 

Applicant should note the following additional ground for refusal.

 

Trademark Act Section 2(E)(1) rEFUSAL – mERELY dESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature and/or characteristic of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

The applied for mark is HOLOGRAPHIC for the following goods:

 

Class 25:

 

Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Clothing extension used to extend the normal size range of clothing items to accommodate pregnancy size changes; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing items, namely, adhesive pockets that may be affixed directly to the body as a decorative piece of clothing with utility; Clothing items, namely, adhesive pockets that may be affixed directly to the inside of clothing for storage and safekeeping of personal items; Clothing items, namely, blindfolds worn over the eyes; Clothing items, namely, gags worn over the mouth; Clothing layettes; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing wraps; Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, cowls and smoke ring scarves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Adult novelty gag clothing item, namely, socks; Babies' trousers; Baby layettes for clothing; Beachwear; Belts; Belts for clothing; Belts made out of cloth; Bibs not of cloth or paper; Bottoms as clothing; Children's cloth eating bibs; Children's and infants' cloth bibs; Collar guards for protecting clothing collars; Collar liners for protecting clothing collars; Collar protector pads for application to clothing collars; Collar protector strips for application to clothing collars; Combinations; Corsets being clothing; Corsets being foundation clothing; Drawers as clothing; Dusters in the nature of coats; Eyeshades as headwear; Fashion hats; Fingerless gloves as clothing; Foulards; Furs being clothing; Garrison caps; Gloves as clothing; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Head wraps; Headbands for clothing; Hijabs; Hoodies; Hoods; Infant and toddler one piece clothing; Infant wear; Infantwear; Jackets; Jackets incorporating backpacks; Jerseys; Kerchiefs; Leather belts; Leather harnesses worn by people as clothing; Loungewear; Mantles; Mufflers as neck scarves; Neckerchiefs; Neckerchieves; Nightwear; Non-disposable cloth training pants; Paper hats for use as clothing items; Pareos; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Parts of clothing, namely, underarm gussets; Perspiration absorbent underwear clothing; Pique shirts; Plimsolls; Pocket kerchiefs; Pocket squares; Pockets for clothing; Puttees and gaiters; Rainwear; Ready-made linings being parts of clothing; Sarongs; Scrub tops and pants not for surgical purposes; Shifts as clothing; Shirt inserts, namely, dickies; Short sets; Shoulder wraps; Shoulder wraps for clothing; Skapris; Ski wear; Skiwear; Sleepwear; Spats; Surf wear; Swaddling clothes; Swim wear; Swimwear; Tennis wear; Thong beachwear; Thong footwear; Thong underwear; Ties as clothing; Tops as clothing; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wimples; Women's clothing, namely, shirts, dresses, skirts, blouses; Wrist bands as clothing; Wristbands as clothing

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Here, the attached evidence from http://www.merriam-webster.com/dictionary/holographic and http://www.merriam-webster.com/dictionary/hologram shows that the wording HOLOGRAPHIC means, “of, relating to, or being a hologram”. The wording HOLOGRAM is defined as, “a three-dimensional image reproduced from a pattern of interference produced by split coherent beam of radiation.” The attached evidence from http://www.incontrolclothing.com/collections/holographic-clothing, http://www.etsy.com/market/holographic_clothing, http://www.amazon.com/slp/holographic-clothing/h3tb6ywzt92q3ob, and http://www.ravewonderland.com/collections/holographics shows that the wording holographic merely describes a feature and/or characteristic of the goods identified by applicant, specifically clothing. Moreover, it appears to be a type of clothing.

 

As such, the wording is merely descriptive of applicant’s goods. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

Amendment to Supplemental Register Unavilable

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

Amendment to Identification of Goods and/or Services Required

 

Applicant must clarify the following indicated language for reasons stated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “clothing, namely, athletic sleeves” is indefinite and overly broad and must be clarified because the nature of the good is unclear. 

 

Applicant may substitute the following wording, if accurate:

 

Class 10:

 

Compression sleeves for athletic use

 

Class 25:

 

Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Clothing extension used to extend the normal size range of clothing items to accommodate pregnancy size changes; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing items, namely, adhesive pockets that may be affixed directly to the body as a decorative piece of clothing with utility; Clothing items, namely, adhesive pockets that may be affixed directly to the inside of clothing for storage and safekeeping of personal items; Clothing items, namely, blindfolds worn over the eyes; Clothing items, namely, gags worn over the mouth; Clothing layettes; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing wraps; Clothing, namely, arm warmers; Clothing, namely, athletic sleeves in the nature of padded elbow compression sleeves sold as an integral component of athletic clothing, namely, {specify clothing item, e.g. jersey, uniform, ect.}; Clothing, namely, base layers; Clothing, namely, cowls and smoke ring scarves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Adult novelty gag clothing item, namely, socks; Babies' trousers; Baby layettes for clothing; Beachwear; Belts; Belts for clothing; Belts made out of cloth; Bibs not of cloth or paper; Bottoms as clothing; Children's cloth eating bibs; Children's and infants' cloth bibs; Collar guards for protecting clothing collars; Collar liners for protecting clothing collars; Collar protector pads for application to clothing collars; Collar protector strips for application to clothing collars; Combinations; Corsets being clothing; Corsets being foundation clothing; Drawers as clothing; Dusters in the nature of coats; Eyeshades as headwear; Fashion hats; Fingerless gloves as clothing; Foulards; Furs being clothing; Garrison caps; Gloves as clothing; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Head wraps; Headbands for clothing; Hijabs; Hoodies; Hoods; Infant and toddler one piece clothing; Infant wear; Infantwear; Jackets; Jackets incorporating backpacks; Jerseys; Kerchiefs; Leather belts; Leather harnesses worn by people as clothing; Loungewear; Mantles; Mufflers as neck scarves; Neckerchiefs; Neckerchieves; Nightwear; Non-disposable cloth training pants; Paper hats for use as clothing items; Pareos; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Parts of clothing, namely, underarm gussets; Perspiration absorbent underwear clothing; Pique shirts; Plimsolls; Pocket kerchiefs; Pocket squares; Pockets for clothing; Puttees and gaiters; Rainwear; Ready-made linings being parts of clothing; Sarongs; Scrub tops and pants not for surgical purposes; Shifts as clothing; Shirt inserts, namely, dickies; Short sets; Shoulder wraps; Shoulder wraps for clothing; Skapris; Ski wear; Skiwear; Sleepwear; Spats; Surf wear; Swaddling clothes; Swim wear; Swimwear; Tennis wear; Thong beachwear; Thong footwear; Thong underwear; Ties as clothing; Tops as clothing; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wimples; Women's clothing, namely, shirts, dresses, skirts, blouses; Wrist bands as clothing; Wristbands as clothing

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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.

 

Multi-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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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.

Response Guidelines

 

 

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.  

 

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Grace Duffin/

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@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 July 30, 2019 for

U.S. Trademark Application Serial No. 88427333

 

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. 

 

 

/Grace Duffin/

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@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 July 30, 2019, 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.”