Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  August 23, 2019

 

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

 

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 following requirement.

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

 

The word “bags” in the International Class 18 identification of goods is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Because the type of bags is unknown, this wording is broad enough to include “knife bags” in International Class 8, “bags for medical waste” in International Class 10, “pannier bags for bicycles” in International Class 12, “gift bags” in International Class 16, “overnight bags” in International Class 18, “mail bags” in International Class 22, and “golf bags” in International Class 28.

 

The wording “bag accessories” and “accessories for the aforesaid goods” is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class. See TMEP §§1402.01, 1402.03(a). For example, since the type of “bags” is unclear, “bag accessories” could include “clips of metal for sealing bags,” which are classified in International Class 6.

 

In addition, “parts, fittings … for the aforesaid goods” is indefinite and too broad because it includes goods in classes other than International Class 18. See TMEP §§1402.01, 1402.03. For example, “parts of the aforesaid goods” could include “zippers for bags,” which are classified in International Class 26. Only structural parts and fittings of the International Class 18 goods are classified in International Class 18.

 

The wording “stuff sacks” is also indefinite and too broad because the nature of these goods is unclear. See TMEP §§1402.01, 1402.03.

 

Furthermore, the wording “bags for water bottles” is too broad. See TMEP §§1402.01, 1402.03. Bags that are specially adapted for holding or carrying other goods are classified in the same class as the goods for which they are adapted. Empty water bottles are classified in International Class 21, and therefore bags specially adapted for holding or carrying water bottles is also classified in International Class 21.

 

Finally, applicant is advised to delete or modify the duplicate entry in the identification of goods for “weekend bags.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

The following is the suggested format for the amended identification of goods (suggested additions are underlined (“addition”), while suggested deletions are struck-through (“deletion”)):

 

CLASS 18: {Indicate specific Class 18 type(s) of bags not already listed in the identification, e.g., overnight, crossbody} bags; luggage; soft-sided luggage; duffle bags; all purpose carrying bags; wallets; tote bags; carry-all bags; weekend bags; hiking bags; rucksacks; travel bags; sports bags; weekend bags; bag accessories, namely, {indicate specific Class 18 goods}; pouches sold empty for attachment to backpacks; stuff sacks, namely, drawstring bags; waist packs; daypacks; bags for water bottles; structural parts and fittings for the aforesaid goods

 

CLASS 21: Bags specially adapted for holding or carrying water bottles

 

CLASS 26: Zippers for bags

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 or add goods not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Therefore, in response to the requirement that applicant amend the identification of goods, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(a)  List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)  Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112; 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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 REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement in this Office action setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

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 August 23, 2019 for

U.S. Trademark Application Serial No. 88453075

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 August 23, 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.”