To: | URBN Products inc. (uspto@trademarks411.com) |
Subject: | U.S. Trademark Application Serial No. 88495896 - LE SAINT - N/A |
Sent: | September 23, 2019 02:02:21 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88495896
Mark: LE SAINT
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Correspondence Address:
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Applicant: URBN Products inc.
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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 23, 2019
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 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).
IDENTIFICATION OF GOODS
If applicant’s various types of “clothing” are in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
The wording “wristbands” in the identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “wristbands as clothing.”
The wording “compression wear clothing; namely; compression socks” is indefinite and identifies goods classified outside of International Class 25. Compression garments are classified in International Class 10. Applicant must amend this wording to clarify the nature of the goods and reclassify them, if appropriate. Suggested amended wording appears below. If applicant adds one or more international classes to the application it must comply with the multiple-class application requirements set forth below.
t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; jumpers; shorts; trousers; tracksuits; underwear; gloves; shorts; trousers; tracksuits; tracksuit pants; sweatbands; headbands; underwear; socks; gloves
See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following identification, if accurate (suggested changes in bold):
International Class 10
Compression wear clothing, namely, compression socks; Compression sleeves for athletic use
International Class 25
Clothing, namely, {indicate specific item e.g. shirts, pants, skirts, etc.}; t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; shorts; trousers; tracksuits; tracksuit pants; underwear; gloves; footwear; socks; shoes; training shoes; track shoes; boots; sandals; flip flops; head wear; sweatbands; headbands; hats; caps being headwear; beanie hats; body building clothing, namely, {indicate specific item e.g. shirts, shorts, etc.}; gym clothing, namely, {indicate specific item e.g. shirts, pants, shorts, etc.}; gym t-shirts; gym vests; gym tank tops; gym hooded sweatshirts, jackets and jumpers; gym jumpers; gym shorts; gym trousers; gym tracksuits; gym underwear; lifting fitness and gym accessory clothing, namely, {indicate specific item e.g. shirts, pants, etc.}; body building and weightlifting clothing straps, namely, {provide common commercial name of or describe goods}; jogging shorts; jogging trousers; wristbands; clothing in the nature of base layers; sleeves worn separate and apart from blouses, shirts and other tops; tights
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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/William D Jackson/
Attorney Advisor - Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064
William.Jackson@uspto.gov
RESPONSE GUIDANCE