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 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:  February 19, 2020

 

 INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on January 24, 2020.

 

In a previous Office action dated September 11, 2019, the trademark examining attorney required applicant to satisfy the following requirements for the applied-for mark: 

 

·       Amend identification of goods

·       Disclaimer Required

·       Mark Description Amendment Required

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:

 

·       Disclaimer Provided

·       Amendment Mark Description Provided

 

See TMEP §§713.02, 714.04. 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• IDENTIFICATION OF GOODS
• ADVISORY: MULTIPLE CLASS APPLICATION REQUIREMENTS

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The proposed amendment to the identification of goods is not acceptable for the reasons stated in this Office action.  Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments.  See TMEP §1402.07(d).

 

INTERNATIONAL CLASS 17

 

The wording “Insulating materials of plastics; elastic materials in the form of specify, e.g., "sheets", "tubes", "bars", etc. of plastic” is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.

 

INTERNATIONAL CLASS 28

 

The wording “Protective padding being parts of sports suits, namely, protective padding for playing motorcycle, motor sports, atv dring, horseback riding, biking”, “protective paddings for playing motorcycle, horseback riding, motor sports, atv driving, biking”, and “shock-absorbing protective elements, namely, protective padding for playing motorcycle, motor sports, atv dring, horseback riding, biking” in the identification of goods for International Class 28 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass sporting articles that protect parts of the body from ordinary, non-life threatening injury in International Class 28 or it could encompass protective padding that protects against life-threatening injury in International Class 9.

 

The wording “protectors, namely, athletic protective spine padding for playing indicate sport” is indefinite and must be clarified to specify the nature of the goods. See below for suggestions

 

Applicant may adopt the following identification, if accurate, with the suggested wording in bold:

 

INTERNATIONAL CLASS 009 [added class]: Elbow guards, namely, shock-absorbing protective elements in the nature of articles of protective clothing for wear by motorcyclists for protection against accident or injury; protective paddings, namely, protective padded clothing for protection against bodily harm and blunt force trauma

 

INTERNATIONAL CLASS 017:    Insulating materials of plastics; elastic materials in the form of _______ {specify the form of the elastic materials, e.g., sheets} of plastic; shock- and impact-absorbing padding and insulation materials in sheet form; the aforesaid goods being in particular for the manufacture of protective padding and protective equipment; protective plastic paddings for impact protection; shock-absorbing protective elements, namely, shock absorbent padding and insulation material in sheet form for use in further manufacturing

 

INTERNATIONAL CLASS 028:    Protective padding being parts of sports suits, namely, protective padding for protecting against non-life threatening injury from motorcycle riding, motor sports, atv driving, horseback riding, and biking; knee guards for athletic use; protective paddings for protecting against non-life threatening injury from motorcycle riding, horseback riding, motor sports, atv driving, and biking; protective equipment for protecting from injury at various sports activities, namely elbow pads for athletic use, hand pads for athletic use, shin pads for athletic use; shock-absorbing protective elements, namely, protective padding for protecting against non-life threatening injury from motorcycle riding, motor sports, atv driving, horseback riding, and biking; wrist protector, namely, wrist guards for athletic use; spine protectors, namely, protective spine padding for protecting against non-life threatening injury from motorcycle riding, motor sports, atv driving, horseback riding, and biking; receptacles and holders specially adapted for carrying protective athletic padding and protective athletic equipment

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See 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 fees sufficient for only two classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

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.

 

If applicant prosecutes this application as a combined or multiple-class application, The application identifies goods in more than one international class; therefore, 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least three classes; however, applicant submitted fees sufficient for only two 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 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.

 

ADDITIONAL FEE REQUIRED TO ADD CLASS

 

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.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

 

HOW TO RESPOND

 

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

 

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@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 and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant has an attorney, the response must be signed by the attorney.

 

• 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 February 19, 2020 for

U.S. Trademark Application Serial No. 88478089

 

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. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@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 February 19, 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.”