Offc Action Outgoing

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.  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 24, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Amended Identification of Goods Required
• Multiple Class Application Requirements

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3937320.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Standard of Analysis:

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

That is, 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).

 

The applicant has applied to register the mark ONE WORLD in standard characters for the following goods:

• “Baseball caps; Baseball shoes; Basketball shoes; Basketball sneakers; Braces as suspenders; Coats; Coats for men and women; Coats for babies, adults, children, women, men; Coats made of cotton; Coats of denim; Football boots; Football boots and studs therefor; Football shoes; Football uniforms; Golf caps; Golf cleats; Golf shoes; Golf shorts; Golf spikes; Golf trousers; Hat frames; Hat liners; Hats; Hats for infants, babies, toddlers and children; Headbands; Headbands against sweating; Headbands for clothing; Leg shapers; Leg warmers; Leg-warmers; Leggings; Leggins; Pants; Pants for babies, children, men, woman; Shirt fronts; Shirt inserts, namely, dickies; Shirt yokes; Shirt-jacs; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for suits; Shirts for babies, adults, children, women, men; Sock suspenders; Socks; Socks and stockings; Sport stockings; Sports bra; Sports bras; Sports jackets; Sports jerseys; Sports jerseys and breeches for sports; Sports over uniforms; Sports overuniforms; Sports shoes; Sports singlets; Sports vests; Sun leggings; Sun sleeves; Sun visors being headwear; Sweatbands; Wristbands as clothing; Wristbands containing a cooling substance to cool the wearer; A-shirts; Adaptive clothing, namely, shirts, pants, hats, hooded sweats; Adult novelty gag clothing item, namely, socks; American football bibs; Ankle socks; Anklets; Anti-perspirant socks; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic pants; Athletic shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Babies' pants; Balloon pants; Baseball caps and hats; Boat socks; Body shirts; Boots for sport; Bucket hats; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Button down shirts; Button-front aloha shirts; Camouflage pants; Camouflage shirts; Camp shirts; Capri pants; Cargo pants; Chef coats; Chef hats; Chef pants; Chef shirts; Cleats for attachment to sports shoes; Cloche hats; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing, namely, shirts, pants, hats, jackets,hooded sweats containing slimming substances; Collared shirts; Combative sports uniforms; Corduroy pants; Corduroy shirts; Cowboy hats; Crop pants; Dance pants; Denim pants; Denims; Dress pants; Dress shirts; Duffle coats; Dust coats; Dusters in the nature of coats; Embroidered clothing, namely, shirts, pants, hats, hooded sweats; European football bibs; Evening coats; Fascinator hats; Fashion hats; Fishing shirts; Flood pants; Footwear not for sports; Fur coats; Fur coats and jackets; Fur hats; Gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag; Golf shirts; Golf pants, shirts and skirts; Graphic T-shirts; Gym pants; Head sweatbands; Heavy coats; Henley shirts; Hooded sweat shirts; Horse-riding pants; Hunting pants; Hunting shirts; Jackets and socks; Jackets incorporating backpacks; Japanese style socks (tabi covers); Japanese style socks (tabi); Jeggings, namely, pants that are partially jeans and partially leggings; Jogging pants; Knit shirts; Knitwear, namely, shirts, pants, hats, hooded sweats; Lab coats; Leather coats; Leather hats; Leather pants; Leather shirts; Leg shielding device, attachable to and detachable from a person's pants, comprised of padding to shield the legs from flying debris when mowing with a string trimmer; Light-reflecting coats; Long-sleeved shirts; Lounge pants; Maternity leggings, namely, leggings featuring built-in maternity bands; Maternity clothing, namely, shirts, pants, hats, hooded sweats; Men's socks; Men's and women's jackets, coats, trousers, vests; Men's dress socks; Moisture-wicking sports bras; Moisture-wicking sports pants; Moisture-wicking sports shirts; Morning coats; Night shirts; Non-disposable cloth training pants; Non-slip socks; Nurse pants; Open-necked shirts; Outerwear, namely, coats, hats, gloves; Over coats; Over shirts; Padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey, uniform, body support; Paper hats for use as clothing items; Paper shoes used when going through metal detectors to keep feet and socks clean; Pea coats; Perspiration absorbent strap to be used in the bill of a hat; Petti-pants; Pinnies in the nature of scrimmage vests for use in sports; Pique shirts; Plastic socks used in the airport environment when going through security to keep feet clean, dry and sanitary; Plastic slippers used in the airport environment when going through security to keep feet and socks clean, dry and sanitary; Polo shirts; Postpartum clothing, namely, shirts, pants, hats, hooded sweats; Rain coats; Rain hats; Ramie shirts; Riding coats; Rugby shirts; Scrub tops and pants not for surgical purposes; Sedge hats (suge-gasa); Sheepskin coats; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Ski pants; Sleep pants; Sleep shirts; Sleeves worn separate and apart from blouses, shirts and other tops; Slipper socks; Small hats; Snap crotch shirts for infants and toddlers; Snow pants; Snowboard pants; Spats; Sport coats; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Sports caps and hats; Stocking hats; Stretch pants; Studs for football boots; Suit coats; Sun protective clothing, namely, shirts, pants, hats, hooded sweats; Suspenders; Sweat pants; Sweat shirts; Sweat-absorbent socks; T-shirts; T-shirts for babies, adults, children, women, men; Tap pants; Tee shirts; Tee-shirts; Thermal socks; Toboggan hats; Toboggan hats, pants and caps; Toe socks; Top coats; Top hats; Track pants; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Trench coats; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Trouser socks; Turtle neck shirts; Water socks; Waterproof jackets and pants; Wearable garments and clothing, namely, shirts; Wind coats; Wind pants; Wind shirts; Winter coats; Women's hats and hoods; Women's clothing, namely, shirts, dresses, skirts, blouses; Woollen socks; Woolly hats; Woven shirts; Woven shirts for babies, adults, children, women, men; Yoga pants; Yoga shirts; Yoga socks.”

 

The cited mark is as follows:

• ONEWORLD (in standard characters) in Registration No. 3937320 for “Tops; bottoms; jackets; skirts; rompers; shorts; pants; sweaters; sleepwear.”

 

Comparison of the Marks:

 

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).

 

Here, applicant’s mark is ONE WORLD and the mark in Registration No. 3937320 is ONEWORLD. The compared marks are identical except for a slight difference in appearance between registrant’s mark, which appears as a compound word with no space separating the words, that is, ONEWORLD; and applicant’s mark, which appears as multiple words with space separating the words, that is, ONE WORLD.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Comparison of the Goods:

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). However, the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

Applicant includes various clothing items, including, “athletic apparel, namely, . . . jackets”, Women’s clothing, namely, . . . skirts”, “Apparel for dancers, namely, . . . shorts”, many types of pants such as “athletic pants” and “cargo pants”, “sleep pants” and “sleep shirts”, “small hats”, “top coats”, and “t-shirts”. Registration No. 3937320 cover “tops; bottoms; jackets; skirts; rompers; shorts; pants; sweaters; sleepwear.”

 

In this case, the registration uses broad wording to describe jackets; skirts; . . . shorts; pants; . . . sleepwear”, which presumably encompasses all goods services of the type described, including applicant’s more narrow “athletic apparel, namely, . . . jackets”, Women’s clothing, namely, . . . skirts”, “Apparel for dancers, namely, . . . shorts”, many types of pants such as “athletic pants” and “cargo pants”, and “sleep pants” and “sleep shirts” respectively.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the attached Internet evidence establishes that the same entity commonly provides many various types of clothing, such as “tops”, “bottoms”, and “jackets” as well as “t-shirts”, “top coats”, and “small hats”, and markets the goods under the same mark. See attached evidence from Express, Banana Republic, and J. Crew. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Further, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Conclusion:

 

The similarity between the applicant's mark and the registered mark, and the relatedness of the applicant's goods to the registrant’s goods, is so great as to create a likelihood of confusion. Thus, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3937320. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant should also note the following requirements.

 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

The wording “hooded sweats” in the identification of goods is indefinite and must be clarified because it is not clear that applicant’s means sweat shirts rather than sweat pants.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, the wording “body support” in the identification of goods is indefinite and must be clarified because this refer to goods in other classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, it could refer to “compression sleeves for athletic use” in class 010 or “athletic supporters” in class 028.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 010: Compression sleeves for athletic use

 

Class 025: Baseball caps; Baseball shoes; Basketball shoes; Basketball sneakers; Braces as suspenders; Coats; Coats for men and women; Coats for babies, adults, children, women, men; Coats made of cotton; Coats of denim; Football boots; Football boots and studs therefor; Football shoes; Football uniforms; Golf caps; Golf cleats; Golf shoes; Golf shorts; Golf spikes; Golf trousers; Hat frames; Hat liners; Hats; Hats for infants, babies, toddlers and children; Headbands; Headbands against sweating; Headbands for clothing; Leg shapers; Leg warmers; Leg-warmers; Leggings; Leggins; Pants; Pants for babies, children, men, woman; Shirt fronts; Shirt inserts, namely, dickies; Shirt yokes; Shirt-jacs; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for suits; Shirts for babies, adults, children, women, men; Sock suspenders; Socks; Socks and stockings; Sport stockings; Sports bra; Sports bras; Sports jackets; Sports jerseys; Sports jerseys and breeches for sports; Sports over uniforms; Sports overuniforms; Sports shoes; Sports singlets; Sports vests; Sun leggings; Sun sleeves; Sun visors being headwear; Sweatbands; Wristbands as clothing; Wristbands containing a cooling substance to cool the wearer; A-shirts; Adaptive clothing, namely, shirts, pants, hats, hooded sweats shirts; Adult novelty gag clothing item, namely, socks; American football bibs; Ankle socks; Anklets; Anti-perspirant socks; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic pants; Athletic shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Babies' pants; Balloon pants; Baseball caps and hats; Boat socks; Body shirts; Boots for sport; Bucket hats; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Button down shirts; Button-front aloha shirts; Camouflage pants; Camouflage shirts; Camp shirts; Capri pants; Cargo pants; Chef coats; Chef hats; Chef pants; Chef shirts; Cleats for attachment to sports shoes; Cloche hats; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing, namely, shirts, pants, hats, jackets, hooded sweats shirts containing slimming substances; Collared shirts; Combative sports uniforms; Corduroy pants; Corduroy shirts; Cowboy hats; Crop pants; Dance pants; Denim pants; Denims; Dress pants; Dress shirts; Duffle coats; Dust coats; Dusters in the nature of coats; Embroidered clothing, namely, shirts, pants, hats, hooded sweats shirts; European football bibs; Evening coats; Fascinator hats; Fashion hats; Fishing shirts; Flood pants; Footwear not for sports; Fur coats; Fur coats and jackets; Fur hats; Gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag; Golf shirts; Golf pants, shirts and skirts; Graphic T-shirts; Gym pants; Head sweatbands; Heavy coats; Henley shirts; Hooded sweat shirts; Horse-riding pants; Hunting pants; Hunting shirts; Jackets and socks; Jackets incorporating backpacks; Japanese style socks (tabi covers); Japanese style socks (tabi); Jeggings, namely, pants that are partially jeans and partially leggings; Jogging pants; Knit shirts; Knitwear, namely, shirts, pants, hats, hooded sweats shirts; Lab coats; Leather coats; Leather hats; Leather pants; Leather shirts; Leg shielding device, attachable to and detachable from a person's pants, comprised of padding to shield the legs from flying debris when mowing with a string trimmer; Light-reflecting coats; Long-sleeved shirts; Lounge pants; Maternity leggings, namely, leggings featuring built-in maternity bands; Maternity clothing, namely, shirts, pants, hats, hooded sweats shirts; Men's socks; Men's and women's jackets, coats, trousers, vests; Men's dress socks; Moisture-wicking sports bras; Moisture-wicking sports pants; Moisture-wicking sports shirts; Morning coats; Night shirts; Non-disposable cloth training pants; Non-slip socks; Nurse pants; Open-necked shirts; Outerwear, namely, coats, hats, gloves; Over coats; Over shirts; Padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey,  and uniforms, body support; Paper hats for use as clothing items; Paper shoes used when going through metal detectors to keep feet and socks clean; Pea coats; Perspiration absorbent strap to be used in the bill of a hat; Petti-pants; Pinnies in the nature of scrimmage vests for use in sports; Pique shirts; Plastic socks used in the airport environment when going through security to keep feet clean, dry and sanitary; Plastic slippers used in the airport environment when going through security to keep feet and socks clean, dry and sanitary; Polo shirts; Postpartum clothing, namely, shirts, pants, hats, hooded sweats shirts; Rain coats; Rain hats; Ramie shirts; Riding coats; Rugby shirts; Scrub tops and pants not for surgical purposes; Sedge hats (suge-gasa); Sheepskin coats; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Ski pants; Sleep pants; Sleep shirts; Sleeves worn separate and apart from blouses, shirts and other tops; Slipper socks; Small hats; Snap crotch shirts for infants and toddlers; Snow pants; Snowboard pants; Spats; Sport coats; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Sports caps and hats; Stocking hats; Stretch pants; Studs for football boots; Suit coats; Sun protective clothing, namely, shirts, pants, hats, hooded sweats shirts; Suspenders; Sweat pants; Sweat shirts; Sweat-absorbent socks; T-shirts; T-shirts for babies, adults, children, women, men; Tap pants; Tee shirts; Tee-shirts; Thermal socks; Toboggan hats; Toboggan hats, pants and caps; Toe socks; Top coats; Top hats; Track pants; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Trench coats; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Trouser socks; Turtle neck shirts; Water socks; Waterproof jackets and pants; Wearable garments and clothing, namely, shirts; Wind coats; Wind pants; Wind shirts; Winter coats; Women's hats and hoods; Women's clothing, namely, shirts, dresses, skirts, blouses; Woollen socks; Woolly hats; Woven shirts; Woven shirts for babies, adults, children, women, men; Yoga pants; Yoga shirts; Yoga socks

 

Class 028: Athletic supporters

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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 USE APPLICATION REQUIREMENTS

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 three 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.

 

 

RESPONDING TO THIS OFFICE ACTION

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and 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.

 

Assistance. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 24, 2019 for

U.S. Trademark Application Serial No. 88566312

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 24, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”