United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88444178
Mark: H.J. JUSTIN & SONS THE CELEBRATED
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Correspondence Address:
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Applicant: Boot Royalty Company, L.P.
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Reference/Docket No. 00200-T0231A
Correspondence Email Address: |
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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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, applicant must respond to the requirements set forth below.
IDENTIFICATION OF GOODS
THIS REQUIREMENT APPLIES TO THE SPECIFIED GOODS ONLY
The identification of goods is indefinite and/or too broad and must be clarified because it could include goods classified in other international classes (e.g., “drawing compasses” in Class 16; etc.). See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):
International Class 9
“{indicate Class 9 type, e.g., Magnetic, Directional, Drafting, etc.}__ compasses.”
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 and/or services or add goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY
If the application identifies goods and/or services in more than one international class, 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).
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.
The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS). See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).
CONSENT
To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
DESCRIPTION OF MARK
The following description is suggested, if accurate: The mark consists of a rectangular border containing the words “H.J. JUSTIN & SONS THE CELEBRATED COWBOY BOOT MAKERS” with vines overlapping the “H”, the “CO” in “COWBOY” and the “M” in “MAKERS” and otherwise appearing underneath and around the terms in the mark. The terms “THE CELEBRATED” appear in smaller font below the “H.J. JUSTIN & SONS” and the terms “COWBOY BOOT MAKERS” appears below the terms “THE CELEBRATED”.
ATTORNEY INFORMATION
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action
/Kim L. Parks/
Trademark Examining Attorney
Kimberly L. Parks
Law Office 112
571.272.6129
kimberly.parks@uspto.gov
RESPONSE GUIDANCE