United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL 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 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: July 20, 2019
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.
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the USPTO’s database of registered
and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02;
see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s
mark.
PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 88340087 precedes applicant’s filing
date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a
likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office
action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if
a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirements,
action on this application will be suspended pending the disposition of U.S. Application Serial No. 88340087. 37 C.F.R. §2.83(c); TMEP
§§716.02(c), 1208.02(c).
IDENTIFICATION OF GOODS
The identification of goods in International Class 9 is indefinite and must be clarified because it
does not sufficiently identify the nature of certain of applicant’s computer programs and software, as well as the subject matter of its laser discs featuring movies, and lacks proper punctuation
between “electrical wires” and “electronic notice boards.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the
following identification, if accurate: compact discs featuring music; downloadable computer game programs; downloadable
computer software for organizing and viewing digital images and photographs; downloadable computer software for transmitting graphics to mobile telephones; downloadable computer software for enhancing audio visual capabilities of multimedia applications for integration of text, audio, graphics, still images and moving pictures; computer
operating system; downloadable computer software for editing text files, audio files, video files, image files and websites; downloadable computer software
for creating and editing computer graphics; downloadable computer software for assisting developers in creating program code for use in multiple application programs; downloadable computer software used for backing up electronic data; downloadable video game software; downloadable computer software for
displaying orders and driver locations on maps; downloadable computer software applications for purchasing, streaming of music, purchasing, streaming of videos that may be
downloaded from a global computer network; computer software applications for providing information in the fields of music, finance, health and fitness, lifestyle, medicine, travelling, sports,
entertainment, namely, music, TV, film and radio entertainment and economy that may be downloaded from a global computer network; computer software applications for navigation, and playing and
purchasing video games, all for mobile phones and tablets that may be downloaded from a global computer network; external computer hard drives; glasses for sports; magnets for industrial purposes;
downloadable interactive multimedia computer game programs; prerecorded magnetic data carriers featuring computer software in the field of electronic games, entertainment,
music, culture, and sports, namely, computer software that allows transmission of graphics to mobile telephones, and computer software to enhance audio
visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures; articles of protective clothing with built in armor for protection
against accident or injury for use in motorcycling; apertometers; compact discs featuring computer games; DVDs featuring music; laser discs featuring movies {indicate subject
matter} and video games; X-Y plotters; protective face-shields for protective helmets; protective ear covering shields, protective ballistic resistant and blast resistant body armor, clothing and
garments; safety harnesses for auto racing; monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; signaling buoys; SIM cards; television
receivers; time switches; wearable activity trackers; audio speakers; audio tape recorders; audiovisual receivers; barometers; bicycle helmets; binoculars; blank audio tapes; blank diskettes; blank
optical disks; blank USB flash drives; blank video tapes; calculators; camcorders; camera shutters; cameras; cases for mobile phones; cinematographic cameras; downloadable
computer operating programs; computers; decorative magnets; digital cameras; digital video recorders; directional compasses; DVD recorders; electric transformers; electrical cables; electrical
wires; electronic notice boards; electronic warning bells; eye glasses; flight simulators; football helmets; fridge magnets; global positioning system (GPS) consisting of
computers, downloadable computer software, transmitters, receivers, and network interface devices; goggles for sports; headphones; loudspeakers; luminous signs; magnifying
glasses; measuring cups; measuring spoons; measuring tapes; mechanisms for coin-operated apparatus; mobile telephones; movie projectors; MP3 players; personal security alarms; personal stereos;
photocopiers; photometers; portable radios; protective eyeglasses; protective helmets for sports; recorded computer operating programs; safety goggles; safety markers; smartglasses; smartwatches;
spectacles; sunglasses; telescopes; televisions; vehicle drive training simulators; video cassette recorders; video monitors; video projectors; video tape recorders; computer game software, recorded;
computer programs, downloadable, namely, {indicate specific functionality of programs}; trackballs; computer game software, downloadable.
The identification of goods in International Class 18 is indefinite and must be clarified because it
does not sufficiently identify the nature of applicant’s trunks. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may
adopt the following identification, if accurate: Cosmetic bags sold empty; reusable shopping bags; saddlery; all purpose sport bags; animal skins and hides; beach
bags; book bags; briefcases; bum bags; carry-all bags; courier bags; duffel bags; handbags; leather and imitation leather; leather and imitation leather bags; luggage; luggage and trunks being luggage; messenger bags; overnight bags; pocket wallets; purses; school bags; school satchels; shoulder bags; suit carriers; umbrellas and parasols; walking sticks;
wallets.
The identification of goods in International Class 25 is indefinite and must be clarified because it
includes duplicate entries for athletic footwear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the
following identification, if accurate: Infantwear; braces as suspenders; sports caps and hats; loungewear; footwear not for sports; t-shirts for children;
sweatshirts for children; trousers for children; shirts for children; pajamas for children; sweaters for children; dresses for children; jackets for children; shoes for children; belts for clothing;
cleats for attachment to sports shoes; jackets; outerwear, namely, coats, hats, gloves; waterproof footwear; footwear, namely, rubbers; athletic footwear for skiers, cross-country skiers and
snowboarders; ski suits; ski trousers; athletic uniforms; athletic tights; athletic pants; athletic shirts; athletic shorts; athletic skirts; ski jackets; ski pants; ski gloves; athletic footwear;
sun protective clothing, namely, sun protective shirts, sun protective pants; sun visors being headwear; anoraks; aprons; athletic footwear; beach footwear; blouses;
climbing footwear; hats; headbands; jogging suits; money belts; pants; shirts; shorts; ski boots; skirts; sweaters; t-shirts; wind resistant jackets.
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.
RESPONSE TO OFFICE ACTION
Applicant is encouraged to call or email the assigned trademark examining attorney below to
resolve the issues in this Office action. Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or
email to agree to a proposed amendment 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.
How to respond. Click to file a response to this nonfinal Office action
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.