| To: | David Burt (mail@ipcounselors.com) |
| Subject: | U.S. Trademark Application Serial No. 88468486 - MR.LONDON - N/A |
| Sent: | September 04, 2019 05:07:38 PM |
| Sent As: | ecom101@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88468486
Mark: MR.LONDON
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Correspondence Address: 60 EAST 42ND STREET, SUITE 2520
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Applicant: David Burt
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Reference/Docket No. N/A
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.
Issue date: September 04, 2019
Search for Conflicting 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).
Summary of Issues
SUMMARY OF ISSUES:
Requirement -- Identification of Goods and Services
The words “waterproof clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The following are examples of acceptable identifications: “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25. Therefore, applicant must amend the identification to specify the type of clothing. If applicant’s “waterproof clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “waterproof clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). Further, The word “headgear” in the identification of goods must be clarified because it is indefinite and too broad without further clarification. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, this word could include “sports helmets” in International Class 9, “orthodontic headgear” in International Class 10, “headwear” in International Class 25, or “headwear for dolls” in International Class 28. Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
Lastly, the identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant may adopt the following identification, if accurate (changes in bold):
“Sound recordings featuring <specify subject matter, e.g., music, fashion, self-improvement>;
video recordings featuring <specify subject matter, e.g., music, fashion, self-improvement>; <specify type of tape and whether blank or pre-recorded
and, if the latter, specify subject matter> tapes; <specify type of tape and whether blank or pre-recorded and, if the latter, specify subject matter> cassettes;
<specify whether blank or pre-recorded and, if the latter, specify subject matter> compact discs; motion picture films about
<specify subject matter>; <specify whether blank or pre-recorded and, if the latter, specify subject matter> video cassettes; video recorders; <specify whether blank or pre-recorded and, if the latter, specify subject matter> CD ROMS; <specify whether downloadable or recorded> video game
software; <specify whether downloadable or recorded> games software for use with television receivers; <specify whether downloadable or
recorded> computer games software; computer software <specify whether downloadable or recorded and function of software and, if content-specific, the field of use>;
video cameras; cameras; photographic and cinematographic apparatus and instruments, namely, <specify items by common commercial name, e.g., video recorders, movie
cameras>; apparatus for recording, transmission, reproduction of sound or images; batteries; encoded magnetic cards <specify type or purpose, e.g., gift, credit,
key>, magnetic magnetically encoded identity cards, credit cards, and debit cards; spectacles, spectacle cases,
sunglasses; video games; mouse pads; screen saving software <specify whether downloaded or recorded on computer media>
screen savers; publications in electronic form, typically supplied on-line from databases or from facilities provided on the Internet
downloadable electronic publications in the nature of <specify type of publication, e.g., newsletters, magazines> in the field of <specify subject matter>>;
<specify whether blank or pre-recorded and, if the latter, specify subject matter> DVDs; headphones; stereo headphones; speakers; hologram apparatus
holograms, magnetically encoded credit cards with holograms; digital music downloadable from the Internet; downloadable video and
audio files featuring physical fitness instruction digital physical instructional information downloadable from the Internet; downloadable electronic publications
<specify nature of publication and subject matter>; application software <specify whether downloadable or recorded and function of software and, if
content-specific, the field of use>; downloadable music sound recordings; downloadable videos; application software; mobile apps
application software <specify whether downloadable or recorded and function of software and, if content-specific, the field of use>; <specify whether
downloadable or recorded> software for providing emoticons; computer games; <specify whether downloadable or recorded> computer and
video games software; computer games programmes downloaded via the internet; data recorded electronically from the internet <specify nature of goods by common commercial
name>; electronic key fobs being remote control apparatus,” in International Class 9;
“Jewellery; precious stones and precious metals; costume jewellery; badges of precious metal; brooches; cufflinks; tie pins; tie clips; earrings; key rings; pendants; horological and chronometric instruments including watches and clocks; decorative key fobs; lapel pins; parts and fittings for the aforesaid goods; rings; earrings; cuff links; bracelets; bracelets made of leather; bracelets made of metal; bracelets of precious metal; cuff links made of precious metals with semi-precious stones; bracelets made of precious metals with semi-precious stones; bracelets with semi-precious stones; bracelets with metal; chains; necklaces; men's jewellery; men's rings,” in International Class 14;
“printed holograms; non-magnetically encoded credit cards with holograms; name badges; paper badges,” in International Class 16;
“Clothing, namely, shirts, T-shirts, hoodies, sweatshirts, trousers, jogging suits, jeans, shorts, sports shorts,
swimwear, beachwear, bikinis, swimming costumes, underwear, lingerie, boxer shorts, teddies being underclothing, slips, camisoles, chemises, negligees, sleepwear, robes,
pyjamas, pyjama sets comprised of <specify items in set>, tracksuits, articles of outerwear, namely, <specify items by common commercial name, e.g.,
coats, parkas>, coats, jackets, jumpers and cardigans, pullovers, twinsets, knitwear, namely, <specify items by common commercial name, e.g., sweaters, shirts>,
leggings, neckties, waistcoats; Clothing, namely, headbands and wristbands, skirts, wraps, jerseys, blouses, dresses, sweatshirts, children’s cloth eating bibs, stockings, ties,
shawls, blazers, headbands and wristbands, overalls, halter tops, tank tops, crop tops, dresses, blazers, blouses, slacks, suits, vests, socks and hosiery, stockings, aprons, sports clothing, namely, <specify items by common commercial name, e.g., jerseys, golf shirts>; footwear, namely, boots, shoes, slippers, sandals, trainers, booties, workout shoes and running
shoes, beach shoes, soles for footwear; headwear, headgear, namely, headbands, hats, caps, berets, earmuffs, top hats, visors, baseball caps,
headbands, beanies; swimwear and swimming costumes; fancy dress costumes; waterproof clothing, namely, <specify items by common commercial name, e.g.,
swimwear, jackets, hats>, footwear and headwear headgear,” in International Class
25;
“ornamental novelty badges,” in International Class 26;
“coin-operated video games; video gaming consoles for playing computer games,” in International Class 28;
“publication of publicity texts,” in International Class 35;
“streaming of sound and video recordings on the Internet,” in International Class 38;
“Entertainment services, namely, <specify services by common commercial name, e.g., providing online
video games, organizing community sporting and cultural events>; entertainment services relating to modelling services, namely, modeling for artists, conducting fashion
shows>; entertainment services, namely, sound recording and video production entertainment services; entertainment services,
namely, providing live concert, musical and video performances; television and radio entertainment services, namely, production of radio and television programs, ongoing
television series in the field of <specify subject matter>>; entertainment services provided by online journals in the nature of blogs
in the field of <specify subject matter>; entertainment services provided by online journals in the nature of vlogs
in the field of <specify subject matter>; entertainment services, namely, live by stage production productions and cabaret shows; production of video and/or sound recordings; modelling services for artists; education services relating to modelling, namely, <specify nature of education services by common commercial name>; presentation, production and performance of live shows, musical shows, concerts,
videos, multimedia videos and radio and television programmes in the field of <specify subject matter>; recording, film, video and television studio services; audio, film,
video and television recording services; publishing of <specify, e.g., newspapers, books, magazines>; music publishing; sound recording, film and video production and
distribution services; educational services, namely, arranging and conducting of seminars, conferences and exhibitions in
the field of <specify subject matter>; publication of books, magazines and other texts in the nature of <specify nature of texts>; entertainment services, namely, providing non-downloadable playback of music via global communications networks digital music (not downloadable) provided from the
Internet; entertainment services, namely, providing non-downloadable playback of sound recordings via global communications networks sound recordings
(not downloadable) provided from the Internet; entertainment services, namely, providing non-downloadable playback of video recordings via global communications networks
video recordings (not downloadable) provided from the Internet; sound recordings provided by on-line streams; video recordings provided by on-line
streams; entertainment services provided by on-line streams, namely, <specify services by common commercial name>; organizing and presenting displays of
entertainment in the nature of <specify nature of entertainment> relating to style and fashion; organizing and presenting displays of entertainment in
the nature of <specify nature of entertainment> relating to music; organizing and presenting displays of entertainment in the nature of <specify nature of
entertainment> relating to film; organizing and presenting displays of entertainment in the nature of <specify nature of entertainment> relating to
television,” in International Class 41.
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.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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 9 classes; however, applicant submitted a fee(s) sufficient for only 4 classes. 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Requirement -- Entity Designation
If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a).
If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the U.S. state or foreign country under whose laws applicant is organized or incorporated. TMEP §803.04. For a U.S. partnership or joint venture, applicant must also list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated. TMEP §803.03(c).
Requirement -- Name of Living Individual and 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.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “<specify assumed name> identifies <specify actual name>, a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, <specify name>, consent to the use and registration of my name, <name>, as a trademark and/or service mark with the USPTO.”
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.
Requirement -- Unsigned Application -- Signed Declaration Required
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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
/Michael P. Keating/
Trademark Attorney
Law Office 101
(571) 272-9177
Michael.Keating@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE