Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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) AND/OR ELECTRONIC SYSTEM FOR TRADEMARK TRIALS AND APPEALS (ESTTA). A LINK TO THE APPROPRIATE TEAS RESPONSE FORM AND/OR TO ESTTA FOR AN APPEAL APPEARS AT THE END OF THIS OFFICE ACTION. 

 

Issue date:  March 05, 2020

 

This Office action concerns applicant’s response filed on February 12, 2020.

 

Applicant was required to amend the identification of goods; applicant’s proposed amended International Class 18 identification is not acceptable, however. Therefore, the requirement for an amended identification of goods is now made FINAL for the reasons set forth below. See 37 C.F.R. §2.63(b); TMEP §§1402.01, 1402.03.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

The wording “sports bags bag accessories, namely, pouches sold empty ;for attachment to backpacks” in the International Class 18 identification of goods requires amendment because the punctuation creates an ambiguity about the goods being offered. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “stuff sacks, namely, sack bags with magnetic closure” and “stuff sacks, namely, sack bags with hook and loop closure” in the International Class 18 identification of goods requires clarification because it is not clear what applicant means by “sack bags” and thus it is not clear if these are goods that would be classified in International Class 18. See TMEP §§1402.01, 1402.03.  For example, sack bags with magnetic closures for the transportation or storage of materials in bulk would be classified in International Class 22.

 

Applicant may adopt the following identification of goods, if accurate:

 

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; bag accessories, namely, pouches sold empty for attachment to backpacks; stuff sacks, namely, drawstring bags; stuff sacks, namely, drawstring bags used as backpacks with magnetic closures; stuff sacks, namely, drawstring bags used as backpacks with hook and loop closures; waist packs; daypacks; structural parts and fittings for the aforesaid goods

.

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

 

Applicant has submitted fees sufficient for only two classes (i.e., International Classes 18 and 21). However, as noted previously, the wording “sack bags” is too broad, and thus the application could current include goods in more than two classes (i.e., International Classes 18, 21, and 22). Therefore, in response to the requirement that applicant amend the International Class 18 identification of goods, applicant must either (1) restrict the application after amendment to two international classes (i.e., the number of classes covered by the fees 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.

 

(b)  Submit a filing fee for each international class not covered by the fees already paid. 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 (view the USPTO’s current fee schedule). 

 

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.

 

RESPONSE OPTIONS

 

Applicant must respond to this final refusal within six (6) months of the issue date of this Office action or the application will abandon.

 

A response to this Office action (called a “request for reconsideration”) would resolve the issues with the International Class 18 identification of goods.

 

Applicant may also appeal this final Office action to the Trademark Trial and Appeal Board (TTAB).

 

Click to file a request for reconsideration of this final Office action that fully resolves all outstanding issues and/or click to file a timely appeal to the TTAB with the required filing fee(s).

 

A request for reconsideration 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.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

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.

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form. Current TEAS RF applicants will generally need to continue to meet similar application requirements. See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). In addition, current TEAS Regular applicants must now provide an email address when submitting documents through TEAS and will generally be sent correspondence electronically from the USPTO. For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

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 05, 2020 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 March 05, 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.”