To: | Intense, LLC (trademark@winthrop.com) |
Subject: | U.S. Trademark Application Serial No. 88497198 - INTENSE - 22196.3 |
Sent: | September 30, 2019 11:57:51 AM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88497198
Mark: INTENSE
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Correspondence Address: |
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Applicant: Intense, LLC
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Reference/Docket No. 22196.3
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 30, 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 -- PRIOR-FILED APPLICATION(S): 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, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.
The filing dates of pending U.S. Application Serial Nos. 88352740 and 88435318 precede applicant’s filing date. See attached referenced applications. If either of the marks 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.
IDENTIFICATION OF GOODS AMENDMENT REQUIRED (International Class 012): Applicant's identification of goods is unacceptable as written and must be amended because portions of the identification are overly broad, indefinite, or misclassified. See TMEP §1402.01. The identification of goods must be specific, definite, clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for applicant's goods. If there is no common commercial or generic name for the goods, then applicant must describe the nature of the goods as well as their main purpose, channels of trade, and the intended consumer(s).
Specifically, applicant’s identification of goods in International Class 012 states, “Bicycles and replacement parts therefore; bicycle frames and bicycle frame components; structural parts of bicycles; bicycle parts, namely, brakes, chains, derailleurs, handlebars, drive trains, forks, saddles, sprockets, handlebar grips, pedals, axle kits, cable guide kits, and bicycle link kits.”
Bicycles and replacement parts therefore must be amended to further specify the nature of the replacement parts. Specifically, applicant must identify the type of bicycle parts being offered.
Bicycle frames and bicycle frame components is acceptable as written.
Structural parts of bicycles is acceptable as written.
Bicycle parts, namely, brakes, chains, derailleurs, handlebars, drive trains, forks, saddles, sprockets, handlebar grips, pedals, axle kits, cable guide kits, and bicycle link kits is indefinite and must be amended. Specifically, the identification for “kits” in International Class 012 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03. Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product. See TMEP §1401.05(a). Applicant must amend the identification to list the components, using the guidelines below. See id.
For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first. See id. Generally, a kit is classified in the same international class as the majority of the components in the kit. See id. For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).
If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit. See id. For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].” See id. Generally, this type of kit is classified in the international class of the product being made. For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
The Office has included the following suggested language, which applicant may adopt, if accurate:
International Class 012: Bicycles and structural replacement parts therefore; bicycle frames and bicycle frame components; structural parts of bicycles; bicycle parts, namely, brakes, chains, derailleurs, handlebars, drive trains, forks, saddles, sprockets, handlebar grips, pedals, axle kits comprised of bike axles, hardware and hand tools for installation, cable guide kits comprised of bike cable guides, hardware and hand tools for installation, and bicycle link kits comprised of bicycle links, hardware, and hand tools for installation.
International Class 025: Clothing, namely, hats, shirts, jackets, socks, t-shirts, sweatshirts, hooded sweatshirts, jerseys, mechanic aprons, tank tops
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 required. 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
/Lee B. Hunt/
Trademark Examining Attorney
USPTO-- Law Office 115
Lee.Hunt@USPTO.gov
Direct Phone: (571) 272-8129
RESPONSE GUIDANCE