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: September 23, 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. 79260170 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.
79260170. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified because it does not sufficiently
identify the nature of applicant’s knitwear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following
identification, if accurate: Jackets for Ladies and Mens; Knitwear, namely, Ladies and Mens, namely, {indicate specific knitted clothing items,
e.g., shirts, dresses, sweaters, etc.}; Sweaters for Ladies and Mens; Sweatpants for Ladies and Mens; Sweatshirts for Ladies and Mens; T-shirts for Ladies and Mens; Tops as clothing for Ladies
and Mens; Woven shirts for Ladies and Mens.
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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must specify whether “MOKA” in the mark has
any meaning in a foreign language. See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §§809, 814. If the wording has meaning in a
foreign language, applicant must provide an English translation, and may use the following format: The English translation of “MOKA” is “{indicate English translation}”. TMEP §809.03.
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement: The wording “MOKA” has no meaning in a foreign language.
Id.
RESPONSE TO OFFICE ACTION
Response guidelines. 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.
Attorney bar information required.
Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state,
commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
To provide bar information. Applicant’s attorney should respond to this Office action by using
the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.
See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO
records.
Attorney statement required. Applicant’s
attorney must provide the following statement: “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of
Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all
U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
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.