| To: | Everlast World's Boxing Headquarters Cor ETC. (trademarks@wnj.com) |
| Subject: | U.S. Trademark Application Serial No. 88483674 - EVERLAST - 144252186619 |
| Sent: | October 01, 2019 08:02:34 AM |
| Sent As: | ecom116@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
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. 88483674
Mark: EVERLAST
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Correspondence Address: |
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Applicant: Everlast World's Boxing Headquarters Cor ETC.
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Reference/Docket No. 144252186619
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: October 01, 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, 2.65(a); TMEP §§711, 718.03.
OFFICE SEARCH REVEALS PRIOR PENDING APPLICATION - ADVISORY
Information regarding pending Application Serial No. 87245349 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
LIKELIHOOD OF CONFUSION – REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4248856. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant’s mark, EVERLAST, is confusingly similar to the registered mark, EVERLAST PRODUCTIONS. Applicant’s mark is confusingly similar to the registered mark because they both begin with the identical wording “everlast” which causes the marks to be confusingly similar in appearance, sound, and meaning, and therefore confusingly similar in overall commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Applicant’s overly broad identification of entertainment services encompasses all of the services of the registered mark which are types of entertainment services. Additionally, registrant’s type of production services are closely related to the event, exhibitions, and the like provided by applicant because registrant’s services are specifically tailored to the production of applicant’s type of events which means that these services would be provided to identical consumers through the same channels of trade which would cause consumers to be confused as the source of the services.
When confronted with identical and closely related services bearing highly similar marks, a consumer is likely to have the mistaken belief that the services originate from the same source. Because this likelihood of confusion exists, registration must be refused.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following.
IDENTIFICATION UNACCEPTABLE - REQUIREMENT
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.
Applicant has identified the following:
“Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists' and drawing materials; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks; notebooks; spiral-bound notebooks; folders; binders; wall calendars; desktop planners; agendas; writing instruments; pens; pencils; markers; crayons; highlighter pens; stationery; paper; envelopes; school writing books; school yearbooks; erasers; pencil sharpeners; glue for stationery or household use; protractors for stationery or household use; paper clips; writing grips; book marks; pencil boxes; stationery cases; drafting rulers; gift vouchers; removable tattoos; banners of paper; display banners made of cardboard; Printed matter, namely, magazines and books in the field of sports; notebooks; Printed and instructional material except apparatus in the field of sports; Gift vouchers for use in the sports retail field; Writing instruments; pens; markers; highlighter pens; calendars; binders; folders; desktop planners; agendas; pencil cases; passport holders; glues, adhesives; paper clips; posters; diaries; calendars; desk mats; books, newspapers and pamphlets; parts, fittings and components for all the aforesaid goods” in Class 016;
“Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals; suitcases; luggage; satchels; haversacks; backpacks; rucksacks; knapsacks; pannier bags; cases; bags; portfolios; wallets; purses; pouches; key fobs made of leather incorporating key rings; key ring cases; card holders; belts; umbrellas; umbrella seats; parasols; walking sticks; canes; whips; harness; saddler; horse tack; baby and child carriers; frames for handbags; straps for skates; bags; tote bags; duffle bags; gym bags; all-purpose sports bags; backpacks; extendible backpacks; padded backpacks; lunch bags; overnight bags; rucksacks; knapsacks; athletic bags; bags for sport; beach bags; belt bags; garment bags for travel; kit bags; school bags; shoe bags for travel; toiletry bags sold empty; cosmetic bags sold empty; wallets; purses; umbrellas; umbrella seats; handbags; shoulder bags; clutch bags; hip pouches; holdalls; business card cases; credit card cases; messenger bags; roller backpacks; glove bags; parts, fittings and components for all the aforesaid goods” in Class 018;
“Clothing; footwear; headgear; aprons (clothing); ascots; babies pants (clothing); bandanas (neckerchiefs); bath robes; bath sandals; bath slippers; bathing caps; bathing drawers; bathing suits; bathing trunks; beach clothes; beach shoes; belts (clothing); berets; bibs not of paper; boas (necklets); bodices (lingerie); boot uppers; boots for sports other than ski; braces for clothing (suspenders); brassieres; breeches for wear; camisoles; cap peaks; caps (headwear); chasubles; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collar protectors; collars (clothing); combinations (clothing); corselets; corsets (underclothing); cuffs; cyclists clothing; detachable collars; drawers (clothing); dress shields; dresses; dressing gowns; ear muffs (clothing); esparto shoes or sandals; fishing vests; fittings of metal for footwear; football boots; football shoes; footmuffs not electronically heated; fur stoles; furs (clothing); gabardines (clothing); gaiter straps; gaiters; galoshes; garters; girdles; gloves (clothing); galoshes; gymnastic shoes; half-boots; hat frames (skeletons); hats; headbands (clothing); headgear for wear; heelpieces for footwear; heelpieces for stockings; heels; hoods (clothing); hosiery; inner soles; jackets (clothing); jackets (Stuff-) (clothing); jerseys (clothing); jumper dresses; jumpers (pullovers); knitwear (clothing); lace boots; layettes (clothing); leg warmers; leggings (trousers); linen (Body-) (garments); liveries; maniples; mantillas; masquerade costumes; miters (hats); mittens; money belts (clothing); motorists clothing; muffs (clothing); neckties; non-slipping devices for footwear; outerclothing; overalls; overcoats; pants; paper clothing; paper hats (clothing); parkas; pelerines; pelisses; petticoats; pinafore dresses; pocket squares; pockets for clothing; ponchos; pullovers; pyjamas; ready-made clothing; ready-made linings (parts of clothing); sandals; saris; sarongs; sashes for wear; scarfs; scarves; shawls; shirt fronts; shirt yokes; shirts; shoes; short-sleeve shirts; shoulder wraps; shower caps; singlets; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips (undergarments); smocks; sock suspenders; socks; soles for footwear; spats; sports jerseys; sports shoes; stocking suspenders; stockings; stockings (Sweat-absorbent-); studs for football boots; stuff jackets (clothing); suits; sun visors; suspenders; sweat-absorbent underclothing (underwear); sweaters; swimsuits; teddies (undergarments); tee-shirts; tights; tips for footwear; togas; top hats; topcoats; trouser straps; trousers; turbans; underclothing; underclothing (Anti-sweat-); underpants; underwear; underwear (Anti-sweat-); uniforms; veils (clothing); vests; visors (hatmaking); waistcoats; waterproof clothing; welts for footwear; wet suits for water-skiing; wimples; wooden shoes; wristbands (clothing); casual wear; sports clothing; outdoor and camping clothing; formal wear; Boxing apparel; boxing shoes; Men's, women's and children's sportswear and activewear; Men's, women's and children's clothing, namely, underwear, nightwear and hosiery, headwear, neckwear, scarves and gloves, belts, swimwear; socks; underwear; boxing robes; boxing trunks; boxing jerseys; board shorts; rash guards; wrestling singlets; martial arts suits; compression garments; gloves; mufflers; hats; caps; sauna suits; clothing, namely, women's, men's and children's casual and athletic clothing, namely, pants (including, without limitation, compression pants), shirts, shorts, jackets, jogging suits, sweatpants, sweaters, sweatshirts, t-shirts, muscle shirts, tank tops, underwear and socks; footwear, namely, women's, men's and children's casual and athletic footwear; headwear, namely, hats and caps; belts; hoodies; leggings; robes; sports bra; crop top; crop tank top; parts, fittings and accessories for all the aforesaid products” in Class 025;
“Games and playthings; gymnastic and sporting articles, equipment and apparatus not included in other classes; exercise and fitness apparatus and equipment; supporters, protectors, guards and pads for sports, athletics and fitness; mouth guards; playground apparatus and equipment; decorations for Christmas trees; playing cards; ear and eyebrow protectors for boxers; boxing masks; boxing gloves; hand tapes and wraps for boxing and MMA (mixed martial arts) use; punch mitts and gloves; punch and kick boards; grappling gloves; sparring gloves; gloves for sports; gloves for use in boxing and MMA (mixed martial arts); striking bags; strike shields; target paddles; punching bags; freestanding bags; training dummies; striking-bag platforms; dumbbells; rowing machines; chest weights; spring exercisers; grip developers; medicine balls; head guards; punching bags; training bags; skipping ropes; shoe guards; boxing and wrestling rings; gymnasium horses, parallel bars, weight benches; step machines; weightlifting gloves; trampolines; exercise equipment; weight lifting equipment; weight lifting belts; free weights; aerobic equipment; aerobic fitness belts; stationery cycles; elastic exercise bands; ankle weights; wrist weights; treadmills; exercise bikes; stationery bikes; elliptical machines; martial arts equipment; kicks; shin guards; body shields; Dumb-bells; kettle bells; free weights; medicine balls; gym balls; gym bars; sit up benches; exercise bikes; stationary bikes; elliptical machines; treadmills; weight benches; weight towers; trampolines; sport mats; video game apparatus; toys; aerobic equipment; aerobic fitness belts, stationery cycles, elastic exercise bands, ankle weights, wrist weights, treadmills; hurdles; javelins; shot puts; discus; poles for used in athletic jumps; vaulting poles; nets; hammers for throws; starting blocks; dumb-bells; kettle bells; free weights; medicine balls; gym balls; gym bars; sit up benches; exercise bikes; elliptical machines; weight benches; weight towers; trampolines; parts, accessories and fittings for all the aforesaid goods” in Class 028;
“Advertising; Business management; Business administration; Office functions; Accounting; Accounts (Drawing up of statements of -); Administrative processing of purchase orders; Advertising by mail order; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Auctioneering; Auditing; Bill-posting; Business appraisals; Business consultancy (Professional -); Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers; Commercial or industrial management assistance; Compilation of information into computer databases; Compilation of statistics; Cost price analysis; Data search in computer files for others; Demonstration of goods; loyalty scheme services; administration of consumer loyalty reward programs; sales promotion through customer loyalty programs; organisation and management of customer loyalty schemes and programs; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Economic forecasting; Efficiency experts; Employment agencies; Fashion shows for promotional purposes (Organization of -); File management (Computerized -); Import-export agencies; Invoicing; Layout services for advertising purposes; Management (Advisory services for business -); Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; Office machines and equipment rental; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Price comparison services; Procurement services for others; Production of advertising films; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Rental of photocopying machines; Rental of vending machines; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; Word processing; Writing of publicity texts; Advertising and marketing; advertising services; business data analysis; online advertising and marketing services; promotional services; business networking; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analysing, understanding and predicting consumer behaviour and motivations, and market trends; placing advertisements and promotional displays in electronic sites accessed via computer networks; providing information regarding careers, employment, and job placement; providing market information in relation to consumer products; providing shopping information; compiling and maintaining online directories; providing information regarding organising and conducting volunteer programmes and community service projects; computerized file management; sales promotion (for others); computer data recording services; systemization of information into computer databases; business information services; providing business information over the internet; retail and online retail services connected to the sale of non-medicated cosmetics and toiletry preparations, non-medicated dentifrices, perfumery, essential oils, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, shaving preparations, soaps, creams, balms, deodorants for personal use, antiperspirants, body wash, bath gels, oils, foams and salts, cosmetic accessories and instruments, fragrances, colognes, aftershaves, toiletries, hair gels, shampoo, mousse, spray, conditioner and wax, skin care and skin cleansing preparations, sunscreen and sun tanning preparations, oral hygiene products, toothpaste, cleaning preparations, shoe and boot creams and polishes, breath freshening sprays, hand washes; retail and online retail services connected with the same of Pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, Dietary and nutritional supplements, dieting pills and powder preparations to promote fat burning, orally ingested gel for boosting energy, liquid vitamin supplements, mineral, vitamin, or nutritionally enhanced water, mineral nutritional supplements, vitamin supplement in tablet form for use in making an effervescent beverage when added to water, medicaments for promoting recovery from tendon injuries, muscle injuries and sports related injuries, medicinal creams for skin care, plasters, kits containing medical preparations, filled first aid boxes and kits, pharmaceutical preparations and substances, medicinal preparations and substances, drugs for medical purposes, mineral and protein preparations and substances, protein supplements, mineral drinks (medicated), waters (beverages) for medical purposes, vitamin drinks, drinks predominantly of minerals or vitamins, preparations for dietary use, dietetic substances adapted for medical use, nutritional supplements, food supplements, carbohydrates in liquid form, plant compounds and extracts for use as dietary supplements, nutritional supplements for boosting energy, highly caffeinated energy pills; retail and online retail services in connection with Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, universal timers, electric timers, countdown timers, smartphones in the shape of watch, wearable activity trackers, scales, weighing scales, electronic scales, bathroom scales, body fat scales, hydration weighing scales, headphones, earphones, wireless headphones, wireless speakers, cases for mobile phones, eyewear, glasses, spectacle glasses, optical glasses, sunglasses, sports glasses, lenses for glasses, frames for glasses, reading spectacles, eye glass cases, Computer application software for mobile phones, portable media players and handheld computers, namely, software for use in database management and use in electronic storage of data, computer application software for mobile phones, portable media players and handheld computers, namely, interactive multimedia software for providing information through the integration of text, audio, graphics, still images and moving pictures for the creation and management of individualized health, well-being, exercise and nutrition programs and by connecting users to the internet, protective helmets, protective visors, teeth protectors, protective eyewear, protective sports helmets, mouth protectors, protective clothing, pedometers, electronic display apparatus for use with exercise equipment, swimming goggles, sports goggles, mouth guards, workout and exercise DVDs, life belts, jackets and boys, ear plugs, cell phone accessories, namely, chargers, cables, skins, cases, screen protectors, arm bands, diving apparatus, glasses, visors, balancing apparatus, bells (warning devices), protective clothing, footwear and headgear, computers and computer apparatus, keyboards and mice, computer software, data processing apparatus, disks, distance measuring and recording equipment, downloadable files, downloadable ringtones for mobile phones, ear plugs and nose plugs, eyepieces, gauges, goggles for sports, headphones, high-visibility safety clothing and reflective safety vests, scale meters, electric locks, locks, padlocks, speakers, loudspeakers, magnets, portable media players, portable telephones, pressure indicators, personal devices for use against accidents, mouthguards, protective masks, protective helmets, helmets, sales, protective boots, sound, audio and video recording, display, reproduction and transmitting apparatus and instruments, frames, cases and straps for glasses, sunglasses, spectacles, reading glasses and eyewear, tape recorders, time clocks, walkie-talkies, nose clips for swimming, high visibility LED and reflective accessories, namely, armbands, wristbands, headbands, waist belts, heel spurs, strobe lights, shoelaces, handheld lights, and vests with reflective and/or LED qualities for night time activity. Emergency information wrist bands, wearable and non-wearable standalone fitness tracking devices (which includes heart rate monitors, pedometers, GPS devices, timers, timing, stop watches, distance travelled, calories burned, sleep monitors etc) which may or may not be Bluetooth enabled, cell phone accessories, meaning chargers, cables, skins, cases, arm bands, screen protectors, FM transmitters, ear buds/headphones, speakers and Bluetooth kit, Computer accessories meaning skins, cases, screen protectors, earbuds/headphones, hubs, mouse pads, mice, chargers; retail and online retail services in connection with precious metals and their alloys, jewellery, precious and semi-precious stones, horological and chronometric instruments, watches, clocks, timers, alarm clocks, medals trophies, cufflinks, tie pins, ornaments of precious metals, trinkets, bracelets, watches and bracelets incorporating functions for monitoring and reporting fitness, training, and activity data, namely, time, distance, pace, body rate, weight management, calories burned, and cumulative activity level, watches and bracelets that communicate data to personal digital assistants, smart phones, and personal computers through internet websites and other computer and electronic communication networks, watchstraps, watch faces, watch dials, watch hands, watch casings, watch parts, stop watches, apparatus for timing sports events, key rings, key chains, key fobs; retail and online retail services in connection with paper and cardboard, printed matter, books, magazines, posters, bookbinding material, photographs, stationery and office requisites, except furniture, adhesives for stationery or household purposes, artists' and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, notebooks, spiral-bound notebooks, folders, binders, wall calendars, desktop planners, agendas, writing instruments, pens, pencils, markers, crayons, highlighter pens, envelopes, paper clips, writing grips, book marks, pencil boxes, stationery cases, drafting rulers, gift vouchers, removable tattoos, banners of paper, display banners made of cardboard, passport holders, glues, adhesives, diaries, calendars, desk mats, pamphlets; retail and online retail services connected to the sale of Leather and imitations of leather, animal skins and hides, luggage and carrying bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, collars, leashes and clothing for animals, suitcases, luggage, bags, backpacks, rucksacks, knapsacks, cases, wallets, purses, pouches, key ring cases, card holders, belts, umbrella seats, canes, horse tack, frames for handbags, straps for skates, tote bags, duffle bags, gym bags, all-purpose sports bags, extendible backpacks, padded backpacks, overnight bags, athletic bags, belt bags, garment bags for travel, kit bags, school bags, shoe bags for travel, toiletry bags sold empty, cosmetic bags sold empty, holdalls; retail and online retail services in connection with household or kitchen utensils and containers, combs and sponges, brushes, except paintbrushes, brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, except building glass, glassware, porcelain and earthenware, water bottles, sports bottles, drinking bottles, plates, cups, bowls, dishes, baskets and trays for domestic use, tableware, cooking utensils, trinket boxes, cool bags, thermally insulated flasks for household use, mugs, tankards, lunch boxes, shakers, protein shaker bottles; retail and online retail services in connection with textiles and substitutes for textiles, household linen, banners, textile wall hangings, linen and upholstery fabrics, bed linen, bed covers, bed clothes, bed spreads, quilt covers, duvet covers, mattress covers, bed sheets, pillows, pillow cases, pillow covers, quilts, duvets, towels, flannels, face towels, kitchen towels, tea towels, bath linen, shower curtains, table linen, table cloths not out of paper, cloth napkins, textile coasters, curtains, curtain tie backs in the nature of textile curtain holders, cushion covers, handkerchiefs, blinds and cloth coasters, bunting, boxing ring canvas, flags, cushions, pads, covers, padding and ropes for boxing rings, all made of textiles or textile materials; retail and online retail services in connection with the sale of clothing, footwear, headgear, boxing apparel, boxing shoes, sportswear, activewear, underwear, nightwear, hosiery, scarves, gloves, belts, swimwear, socks, boxing robes, boxing trunks, boxing jerseys, rash guards, hats, caps, sauna suits, pants, shirts, shorts, jackets, jogging suits, sweatpants, sweaters, sweatshirts, t-shirts, muscle shirts, tank tops, hoodies, leggings, sports bras, crop tops, crop top tank tops; retail and online retail services in connection with the sale of lace, braid, embroidery and haberdashery, ribbons and bows, buttons, hooks and eyes, pins and needles, artificial flowers, hair decorations, false hair, braid, sewing pins, sewing needles, ornamental novelty badges for wear not of precious metals, zip fasteners for bags, edgings for clothing, clothing hooks, shoulder pads for clothing, collar stays, competitors' numbers not of textile, decorative cords for clothing, trouser clips for cyclists, heat adhesive patches for decoration of textile articles, shoe fasteners, competitors' numbers and letters not of textile for marking linen, monogram ornamental cloth patches for marking linen on clothing, ornamental novelty badges, zippers, shoe laces, belt clasps, Novelty buttons; retail and online retail services in connection with the sale of games, toys and playthings, video game apparatus, gymnastic and sporting articles, decorations for Christmas trees, fitness and exercise equipment, supporters, protectors, guards and pads for sports, athletics and fitness, mouth guards, playground apparatus and equipment, playing cards, ear and eyebrow protectors for boxers, boxing masks, boxing gloves, hand tapes and wraps for boxing and MMA (mixed martial arts) use, punch mitts and gloves, punch and kick boards, grappling gloves, sparring gloves, gloves for sports, gloves for use in boxing and MMA (mixed martial arts), striking bags, strike shields, target paddles, punching bags, freestanding bags, training dummies, striking-bag platforms, dumbbells, rowing machines, chest weights, spring exercisers, grip developers, medicine balls, head guards, punching bags, training bags, skipping ropes, shoe guards, boxing and wrestling rings, gymnasium horses, parallel bars, weight benches, step machines, weightlifting gloves, trampolines, exercise equipment, weight lifting equipment, weight lifting belts, free weights, aerobic equipment, aerobic fitness belts, stationery cycles, elastic exercise bands, ankle weights, wrist weights, treadmills, exercise bikes, stationery bikes, elliptical machines, martial arts equipment, kicks, shin guards, body shields, dumb-bells, kettle bells, free weights, medicine balls, gym balls, gym bars, sit up benches, exercise bikes, stationary bikes, weight benches, weight towers, trampolines, sport mats, aerobic equipment, aerobic fitness belts, stationery cycles, elastic exercise bands, ankle weights, wrist weights, hurdles, javelins, shot puts, discus, poles for used in athletic jumps, vaulting poles, nets, hammers for throws, starting blocks, dumb-bells, kettle bells, free weights, medicine balls, gym balls, gym bars, sit up benches; retail and online retail services in connection with the sale of meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, food protein bars, power bars, food supplement bars to support physical exercise, protein milk, whipped cream, pate, food bars, nutrition and supplement products, pre and post workout nutrition products, protein powders, mass gain powder, whey protein powder, protein based, nutrient-dense snack foods, dairy-based powders for making dairy-based food beverages and shakes, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, Bread, pastry and confectionery, Edible ices, Sugar, honey, treacle, Yeast, baking-powder, Salt, Mustard, Vinegar, sauces (condiments), Spices, Ice, Popcorn, husked oats, oat flakes, oat based food, muesli, cereal preparations, corn flakes, corn flour, corn meal, maize flakes, maize flour, maize meal, gluten for food, flour, biscuits, cookies, edible decorations for cakes, cakes, tarts, petit fours, macaroons, bread, buns, waffles, pancakes, pizzas, pastilles, pasta and noodles, chocolate, chocolate based beverages, chocolate beverages with milk, cocoa, cocoa based beverages, coffee beverages with milk, coffee flavourings, confectionery, fondants, liquorice, lozenges, candy caramels, candy for food, maltose, gum sweets, pralines, peppermint sweets, natural sweeteners, pepper, mustard, essences for foodstuffs, starch for food, ice cream, edible ices, ice sherbets, ice sorbets, ice for refreshment, glucose for food, golden syrup, semolina, pies, puddings, sandwiches, sauces, ketchup, salad dressings, mayonnaise, non-medicated additives for beverages: aerated beverages with a coffee, cocoa or chocolate base, beverages made from cereals, flavourings (other than essential oils) for beverages, powder for making beverages, whiteners (non-dairy) for beverages, tea beverages, instant powder for making flavoured drinks, corn starch derivatives in powder form for making into drinks, preparations for use as dietetic additives for consumption by sports persons, protein cereal bars, Chewing gum, carbohydrate and energy bars, protein bars, Cereal based energy bars, Chocolate-based meal replacement bars; retail services connected to the sale of Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; non-alcoholic beverages enriched with added vitamins, minerals or added trace elements; isotonic drinks; energy drinks; cordials; seltzers; sorbets; preparations in the form of powder for making drinks; beverages for use as aids to slimming; beverages containing soya; drinks; sports drinks; isotonic drinks; protein drinks; beverages containing vitamins; energy shots; soft drinks; powders used in the preparation of sports and energy drinks; drinking water; powder for making beverages; instant powder for making flavoured drinks; protein powder mix; hydration drinks powder mix; advertising, marketing and promotional services provided by means of social media; price comparison services; comparison shopping services; business operation of shopping malls; business management of retail outlets; retail shop window display arrangement services; presentation of goods on communications media, for retail purposes; assistance information, advisory and consultancy services relating to the aforesaid” in Class 035;
“Education; providing of training; entertainment; sporting and cultural activities; Sports club services, namely, boxing club services; leisure centre, health club, fitness centre and gymnasium services, namely, providing instruction and equipment in the field of physical exercise; provision of swimming pools; provision of discotheque services; provision of recreational facilities; provision of gym facilities; provision of facilities relating to gymnastics, weight training, body building, aerobics, boxing and physical exercise; instructional and training services relating to sports, gymnastics, weight training, body building, aerobics, physical exercise, physical rehabilitation, diet, nutrition, health and beauty; physical fitness advisory services; entertainment services, namely, providing sporting and cultural activities, namely, boxing exhibitions, fitness exhibitions; information, advisory and consultancy services relating to the aforesaid” in Class 041.
Unfortunately, the italicized wording above is insufficiently definite for registration purposes. See TMEP §1402.01.
Use of parentheses: The parenthetical information should be incorporated into the identification and the parentheses should be deleted. See TMEP §1402.12. 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.
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.
Class 016
The type and subject matter of the printed matter must be specified, e.g., books about math.
The type of office requisites must be specified, e.g., staplers.
The type of artists’ and drawing materials must be specified, e.g., paint brushes and pencils.
The type of instructional and teaching materials must be specified, e.g., books about math.
Applicant must clarify the use of the protractors, e.g., protractors as drawing instruments (Class 016 goods).
Applicant must further specify the type of gift vouchers and removable tattoos, e.g., printed gift vouchers, removable tattoo transfers.
The type of glues and adhesives materials must be specified, e.g., glues being adhesives for stationery purposes, office glues, etc.
The subject matter of the books and pamphlets must be specified, e.g., books and pamphlets about math.
The common commercial name of each part, fitting, and component must be specified. Alternatively, applicant may indicate that the goods are replacement parts and replacement fittings.
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.
Class 018
The type of carrying bags must be specified, e.g., all-purpose carrying bags.
The particular use of the panniers must be specified, e.g., pannier bags for bicycles and motorcycles (Class 012 goods).
The common commercial name of the cases, bags, portfolios, and pouches must be specified, e.g., cases being purses, bags being luggage, briefcase type portfolios, waist pouches, etc.
The nature of the key fobs must be specified, e.g., key fobs being key cases of leather incorporating key rings.
The nature of the key ring cases, card holders, and belts must be specified, e.g., key ring cases, namely key cases and purses, credit card holders, belts being luggage straps.
The nature of the umbrella seats must be specified, e.g., umbrella seats being replacement parts for umbrellas.
The type of horse tack must be specified, e.g., Horse tack, namely, {indicate types of goods, e.g., bridles, reins, leads, bits, stirrup leathers, girth straps, lunge lines, halters}.
The type of carriers must be specified, e.g., baby carriers worn on the body.
The type of skate straps must be specified, e.g., straps for carrying skates.
Applicant must specify if the lunch bags are of paper (Class 016 goods) or not of paper (Class 021 goods).
The type of glove bags must be specified, e.g., glove bags in the nature of purses that are large enough to fit a pair of gloves.
The common commercial name of each part, fitting, and component must be specified. Alternatively, applicant may indicate that the goods are replacement parts and replacement fittings.
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.
Class 025
The items of clothing, headgear, knitwear, apparel and the like must be identified by their common commercial names, e.g., shirts.
The nature of the collar protectors must be specified, e.g., color guards for protecting clothing from collars.
The nature of the footwear fittings must be specified, e.g., fittings being replacement parts of footwear.
The nature of the footmuffs must be specified and applicant must classify the goods accordingly, e.g., non-electric fitted footmuffs for baby carriages (Class 012 goods)
The wording “miters (hats)” must be amended to clarify the nature of the goods, e.g., miters being hats.
The type of non-slip devices must be specified, e.g., Non-slip soles for footwear.
The type of paper hats, linings, slips, teddies, wristbands, and visors must be specified and applicant may do so by incorporating the parenthetical material applicant provided in the identification.
The type of mufflers must be specified, e.g., neckscarves being mufflers.
Applicant has classified “compression pants” in International Class 025; however, the proper classification is International Class 010. Therefore, applicant may respond by (1) adding International Class 010 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “compression pants from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
The common commercial name of each part, fitting, and component must be specified. Alternatively, applicant may indicate that the goods are replacement parts and replacement fittings.
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.
Class 028
The common commercial name of the goods and their specific Class 028 fitness, exercise, gaming (etc.) purpose must be identified.
The common commercial name of each part, fitting, and component must be specified. Alternatively, applicant may indicate that the goods are replacement parts and replacement fittings.
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.
Class 035
The type of accounts services and auditing must be specified, e.g., accounts receivable billing services, business auditing.
The type of loyalty scheme and reward services must be specified, e.g., Business administration of consumer loyalty programs, Promoting the goods and services of others by means of the issuance of loyalty rewards cards
The type of efficiency expert services must be specified, e.g., business efficiency advice services.
The type of file management services must be specified, e.g., computer file management services.
The type of management, publicity, promotions, and marketing services must be specified.
The type of opinion polling must be specified, e.g., public opinion polling.
The type of procurement services must be specified, e.g., Procurement, namely, purchasing tickets to entertainment events for others.
The nature of the Publicity columns preparation must be specified, e.g., writing of publicity texts.
The type of transcription services must be specified, e.g., providing office functions.
The nature of the shopping information and compiling and maintaining online directories services must be specified, e.g., providing consumer information for shopping purposes, Compiling indexes of information.
The type of computer data recording services must be specified.
The type of retail services must be specified, e.g., retail store services featuring energy shots.
The wording “bluetooth” is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No(s). 2909356. Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
The wording “power bar” is the pluralization of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No(s). 1447798. Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Class 041
The method and subject matter of the education must be provided.
The subject matter of the training must be identified.
The common commercial name of the activities, club services and centre services must be identified by their common commercial names.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 7 classes; however, applicant submitted a fee(s) sufficient for only 6 class(es). 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.
How to respond. Click to file a response to this nonfinal Office action
/SeanCrowley
Examining Attorney
Law Office 116
U.S. Patent and Trademark Office
571.272.8851
sean.crowley@uspto.gov
RESPONSE GUIDANCE
