UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/20/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

·        Section 2(d) Refusal – Likelihood Of Confusion

·        Identification and Classification of Goods

·        Multiple Class Application Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4191153, 4758276, 4191152, 5779961, 4394367.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Applicant has applied to register the mark FORZA in standard characters for “Footballs; soccer balls; netballs; basketballs; volleyballs; coaching boards; goals, goal posts, and nets for field and rink sports; pumps for inflating sports balls; targets for sporting use”. 

 

U.S. Reg. No. 4191153 mark is F FORZA in special form for “Boxing and mixed martial arts equipment, namely, boxing gloves, mixed martial arts ("MMA") gloves, mixed martial arts ("MMA") fight gloves, mixed martial arts ("MMA") bag gloves, mixed martial arts ("MMA") mixed martial arts ("MMA") training gloves, mixed martial arts ("MMA") grappling gloves, mixed martial arts ("MMA") striking gloves, mixed martial arts ("MMA") competition gloves, mixed martial arts ("MMA") sparring gloves, mixed martial arts ("MMA") fitness gloves, sparring gloves, training gloves, heavy bag gloves, boxing training gloves, amateur gloves, amateur competition gloves, weighted gloves, shadow boxing gloves, punch mitts, focus mitts, kick shields, boxing hand wraps, mixed martial arts ("MMA") hand wraps, protective hand wraps, knuckle guards, knuckle protectors, traditional hand wraps, classic hand wraps, hand protectors for athletic use, namely, gel wraps, hand protectors, wrist supports, wrist wraps, thigh pads, shin pads, shin guards, shin instep guards, shin protectors, grappling shin guards, striking shin guards, trainers shin guards, shin and instep guards, ankle guards, ankle supports, ankle protectors, ankle wraps, knee pads, knee guards, knee wraps, protective athletic cups, athletic supporters, belly pads, elbow pads, elbow guards, head guards, face protectors, cage face protectors, hand wraps, chest protectors, body protectors, mouth guards, punching bags, speed bags, heavy bags, double end bags, double ended striking bags, bag hangers, bag swivel mechanisms, speed bag swivel mechanisms, speed ball swivel mechanisms, speed bag platforms, double end punching balls, medicine balls, athletic tape, namely, boxing tape, jump ropes, inflatable punching bags; exercise equipment, namely, barbells, dumbbells, dumbbell sets, yoga mats, weightlifting bars, weight lifting gloves, weight lifting straps, weight lifting belts, weight lifting hooks, weight collars, push up stands, dip stands, dip bars, wrist weights, ankle weights, exercise balls, stability balls, weighted vests, abdominal boards, abdominal exercise wheels, balance boards, athletic equipment, namely, striking shields, ankle weights for exercise, sports equipment for boxing and martial arts, namely, bag anchors for securing bags, stretch bands used for yoga and physical fitness purposes, exercise bars, namely, push up bars, exercise equipment, namely, neck and shoulder supported weights for twisting and lifting exercises, boxing gloves for autograph signing” and “Retail store services and on-line retail store services over a global computer network, featuring boxing and mixed martial arts equipment and apparel”

 

U.S. Reg. No. 4758276 mark is F FORZA SPORTS in standard characters for “Boxing and martial arts equipment and apparatus, namely, bag gloves, training gloves, competition gloves, grappling gloves, handwraps, knuckle guards, weighted gloves, weighted vests, wrist and ankle weights, head guards, groin and body protectors, rib protectors, jump ropes, punching bags, speed bags, bag hangers, double end bags, bag anchors for securing bags, bag swivel mechanisms, mouth guards for athletic use, punch mitts, thai pads, weight lifting accessories, namely, weight lifting gloves, belts, straps, and hooks, weight collars, push-up stands, dip stands, exercise balls, stability balls, abdominal exercise wheels, yoga mats, resistance training rubber tubing and workout towels” and “store services, retail mail order catalog services, and on-line retail store services over a global computer network, all featuring boxing and mixed martial arts equipment, apparatus and apparel, cycling gear, running accessories and footwear, sports therapy products, swimming training accessories, weightlifting accessories, and other fitness apparel and accessories”

 

U.S. Reg. No. 4191152 mark is FORZA MMA in standard characters for “Boxing and mixed martial arts equipment, namely, boxing gloves, mixed martial arts ("MMA") gloves, mixed martial arts ("MMA") fight gloves, mixed martial arts ("MMA") bag gloves, mixed martial arts ("MMA") mixed martial arts ("MMA") training gloves, mixed martial arts ("MMA") grappling gloves, mixed martial arts ("MMA") striking gloves, mixed martial arts ("MMA") competition gloves, mixed martial arts ("MMA") sparring gloves, mixed martial arts ("MMA") fitness gloves, sparring gloves, training gloves, heavy bag gloves, boxing training gloves, amateur gloves, amateur competition gloves, weighted gloves, shadow boxing gloves, punch mitts, focus mitts, kick shields, boxing hand wraps, mixed martial arts ("MMA") hand wraps, protective hand wraps, knuckle guards, knuckle protectors, traditional hand wraps, classic hand wraps, hand protectors for athletic use, namely, gel wraps, hand protectors, wrist supports, wrist wraps, thigh pads, shin pads, shin guards, shin instep guards, shin protectors, grappling shin guards, striking shin guards, trainers shin guards, shin and instep guards, ankle guards, ankle supports, ankle protectors, ankle wraps, knee pads, knee guards, knee wraps, protective athletic cups, athletic supporters, belly pads, elbow pads, elbow guards, head guards, face protectors, cage face protectors, hand wraps, chest protectors, body protectors, mouth guards, punching bags, speed bags, heavy bags, double end bags, double ended striking bags, bag hangers, bag swivel mechanisms, speed bag swivel mechanisms, speed ball swivel mechanisms, speed bag platforms, double end punching balls, medicine balls, athletic tape, namely, boxing tape, jump ropes, inflatable punching bags; exercise equipment, namely, barbells, dumbbells, dumbbell sets, yoga mats, weightlifting bars, weight lifting gloves, weight lifting straps, weight lifting belts, weight lifting hooks, weight collars, push up stands, dip stands, dip bars, wrist weights, ankle weights, exercise balls, stability balls, weighted vests, abdominal boards, abdominal exercise wheels, balance boards, athletic equipment, namely, striking shields, ankle weights for exercise, sports equipment for boxing and martial arts, namely, bag anchors for securing bags, stretch bands used for yoga and physical fitness purposes, exercise bars, namely, push up bars, exercise equipment, namely, neck and shoulder supported weights for twisting and lifting exercises, boxing gloves for autograph signing” and “Retail store services and on-line retail store services over a global computer network, featuring boxing and mixed martial arts equipment and apparel”

 

U.S. Reg. No. 5779961 mark is FORZA SPORTS in standard characters for “Ankle weights; Balance boards for improving strength, toning, conditioning, balance, and proprioception; Barbell pads; Barbells; Chest protectors for athletic use; Chest protectors for sports; Dumbbells; Elbow pads for athletic use; Focus mitts; Hand grips for exercise; Hand wraps for sports use; Jump ropes; Knee guards for athletic use; Knee pads for athletic use; Pads for use in mixed martial arts; Pilates toning balls; Protective padding for playing mixed martial arts; Push up stands; Shin pads for athletic use; Stretch bands used for yoga and physical fitness purposes; Thai pads; Weight lifting gloves; Yoga blankets; Yoga blocks; Yoga boards; Yoga bolsters; Yoga cushions; Yoga gloves; Yoga straps; Ankle and wrist weights for exercise; Athletic protective pads for the body while engaging in mixed martial arts; Athletic supporters; Athletic tape; Athletic equipment, namely, hand wraps; Athletic equipment, namely, striking shields; Athletic sporting goods, namely, athletic wrist and joint supports; Athletic wraps for supporting wrists during exercise; Body protectors for mixed martial arts; Boxing bag swivel mechanisms; Electronic game equipment with a watch function; Exercise balls; Exercise platforms; Exercise wrist weights; Exercise equipment, namely, inflatable balls; Exercise equipment, namely, neck and shoulder supported weights for twisting and lifting exercises; Exercise equipment, namely, rotary abdominal boards; Exercise equipment, namely, shoulder stretcher using resistance cables; Head straps for weight lifting; Kick pads for martial arts; Manually-operated exercise equipment; Medicine balls; Protective athletic cups; Punching bags; Punching balls; Shin guards for athletic use; Sports equipment for boxing and martial arts, namely, boxing gloves, mixed martial arts gloves, punching mitts, and shin guards; Sports equipment for boxing and martial arts, namely, boxing gloves, boxing bags, punching mitts, belly protectors, groin protectors and shin guards; Waist trimmer exercise belts; Weight lifting belts; Weight lifting equipment, namely, straps; Work-out gloves; Wrist and ankle weights for exercise” and “Computerized on-line retail store services featuring fitness, exercise, and mixed martial arts equipment and apparel; On-line retail department store services”

 

U.S. Reg. No. 4394367 mark is FZ FORZA in standard characters for “Badminton rackets, tennis rackets, squash rackets, racket ball rackets; balls, namely, tennis balls, squash balls and balls for racket sports; shuttlecocks of feathers and nylon; sporting articles, namely, strings for rackets and hand grips for badminton rackets, tennis rackets, squash rackets and racket ball rackets”

 

Comparison 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).

 

Two of the marks being in special characters does not remove them from a likelihood of confusion with registrant’s standard character mark. A mark in typed or standard characters such as Applicant’s may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element such as Registrant’s mark generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

All of these marks all contain the identical wording FORZA. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

In the present case, the registrant has disclaimed the wording MMA and SPORTS in the registered mark as merely descriptive of or generic for the registrant’s goods and services.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the identical shared wording FORZA the more dominant element of the mark.

 

Applicant has merely deleted the descriptive terms and the lettering “F” and “FZ” from the registrants’ marks. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Because the marks look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.

 

Comparison of the Goods and Services

 

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 compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The attached Internet evidence, consisting of nike.com, kohls.com, dickssportinggoods.com, amazon.com, reebok.com, titleboxing.com and addidas.com establishes that the same entity commonly manufactures the relevant goods and services and markets the goods and services under the same mark, that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and that the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  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). Specifically, the attached evidence demonstrates the same entity retailing, manufacturing and offering the athletic goods of applicant and registrant under the same mark and in the same channels of trade.

 

Further, registrant’s retail store services featuring athletic equipment, apparatus, and apparel encompasses retail store services featuring all of applicant’s goods. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Accordingly, the goods and services are considered related for purposes of the likelihood of confusion analysis.  

 

Because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration.

 

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

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The wording “coaching boards” in the identification of goods is indefinite and must be clarified because the nature of the good is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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 has classified “coaching boards” in International Class 028; however, the proper classification is likely International Class 016.  Therefore, applicant may respond by (1) adding International Class 016 to the application and reclassifying these goods in the proper international class, (2) deleting “coaching boards” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 016: dry erase writing boards

 

Class 028: Footballs; soccer balls; netballs; basketballs; volleyballs; goals, goal posts, and nets for field and rink sports; pumps for inflating sports balls; targets for sporting use

 

See TMEP §§1402.01, 1402.03

 

Applicant’s goods and/or services 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 ADVISORY

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 016 and 028.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 028; and applicant needs a specimen for class 016.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE

 

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.

 

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.  

 

 

 

/George Murray/

Examining Attorney

Law Office 121

571-270-5101

George.Murray@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/20/2019 FOR U.S. APPLICATION SERIAL NO. 88448274

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/20/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.