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:  November 26, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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

            -  Prior-Filed Application

            -  Amendment to Identification of Goods and Services Required

            -  Multiple-Class Application Requirements

            -  Foreign Registration Certificate Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4381946 (LIL’ TRAX LEAVE YOUR MARK), 4710958 (LEAVE YOUR MARK), 5174365 (TRAX LEAVE YOUR MARK), 5314926 (LEAVE YOUR MARK), and 5874490 (LEAVE YOUR MARK).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant’s mark is “LEAVE YOUR MARK”, presented with design, for “Handbags; Travel baggage; Card wallets; Card cases of leather; Leather credit card holders; Wallets; File folders made of leather; Key cases made of leather; Handbags; Suitcases; Make-up bags, not fitted; Gym bags; Evening bags and shoulder bags for women; Shopping bags made of skin; School book bags; Travel garment covers; Shoe carriers for travel; Beach bags; Nappy bags; Backpacks; Boston bags; Travelling cases; Canvas bags; Overnight bags; Trolleys; Satchels; Formal handbags; Vanity cases (not fitted); Leather; Chests and boxes of leather; Briefcases; straps made of leather; Umbrellas; Leather leashes; Saddlery” in International Class 18, “Coats; Jackets; Trousers; Skirts; Tops; Mackintoshes; Topcoats; Waist belts; Suspenders; Gowns; Heavy jackets; Sweaters; Denim jeans; Gowns; Cloaks; Parkas; Shirts; Undershirts; Cardigans; Underwear; Baby doll nighties; Robes; Swimwear; Negligees; Swimming costumes; Robes; Shawls; Foulards; Sashes for wear; Neckties; Neck ties; Sweat shirts; Maillots; Polo shirts; Leotards; Trousers shorts; Combinations; Wedding dresses; Stockings; Socks; Shoes; Slippers; Covers for shoes; Galoshes; Clogs; solesfor footwear; Shoe uppers; Boots; Ski boots; Snow boots; Half-boots; Espadrilles; Sandals; Bath sandals; Gloves; Mittens; Hats and caps; Visors” in International Class 25, and “The bringing together, for the benefit of others, of cosmetics, perfumery, candles, hand tools and implements (hand-operated), cutlery, forks and spoons, razors, manicure and pedicure tools, spectacles, optical goods and cases for optical goods, tablet computers, telephones, smartwatches and covers therefor, health monitoring sensors and apparatus for monitoring heart rate, lighting installations and lamps, land vehicles; The bringing together, for the benefit of others, of jewellery, horological articles, stationery, office stationery, bags, pocket wallets, saddlery, furniture, kitchen utensils, utensils for household purposes, services (dishes), bath linen, bed linen, table linen, clothing, footwear, headwear, belts, buttons, hinges, buckles, carpets, floor coverings, wall hangings; The bringing together, for the benefit of others, of games, toys, instruments, tools, devices and clothing designed for sports games, for sports and for physical education, bags and cases for sporting goods, fruits and vegetables, jellies, jams, compotes, honey, edible oils, pastries, confectionery, chocolate, coffee, tea, natural plants and flowers, non-alcoholic beverages, alcoholic beverages, smokers' articles; All of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; Commercial presentation of goods for promotional purposes (gadgets) and the bringing together of the aforesaid (excluding the transport thereof), enabling customers to conveniently view and purchase those goods” in International Class 35.

 

The registrants’ marks are:

 

“LIL’ TRAX LEAVE YOUR MARK” U.S. Registration No. 4381946, presented with design, for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, and athletic uniforms; athletic footwear; athletic shoes; down jacket; fleece tops; footwear; gloves; headgear, namely, hats and caps; hooded pullovers; rain boots; rain wear; sandals and beach shoes; slippers; soccer bibs; soccer boots; soccer shoes; socks; sports caps and hats; sports jackets; sports jerseys; sports shirts; sports shirts with short sleeves; sports vests; undergarments; and underwear” in International Class 25.

 

“LEAVE YOUR MARK” U.S. Registration No. 4710958, in standard character form, for “Beer” in International Class 32.

 

“TRAX LEAVE YOUR MARK” U.S. Registration No. 5174365, presented with design, for “Clothing, namely, shirts, pants, jackets, athletic uniforms, down jackets, fleece tops, gloves, hooded pullovers, rain wear, soccer bibs, socks, sports jackets; sports jerseys, sports shirts, sports shirts with short sleeves, sports vests, undergarments, and underwear; footwear, namely, athletic shoes, soccer boots, soccer shoes, rain boots, sandals and beach shoes, slippers; headgear, namely, hats, caps, and sports caps” in International Class 25.

 

“LEAVE YOUR MARK” U.S. Registration No. 5314926, in stylized form, for “Ink Stamps” in International Class 16.

 

“LEAVE YOUR MARK” U.S. Registration No. 5874490, in standard character form, for “Parts for bodies of motor vehicles, namely, roof panels, sunroofs, and structural parts therefor; structural parts for land vehicles, namely, cockpits, dashboards, cross-car beams; interior trim for land vehicles; center consoles for land vehicles; airbags, steering columns, pedal assemblies, and brake boosters, all sold as integral components of land vehicle cockpits and of land vehicles dashboards; parts specially adapted for land vehicles, namely, interior roof liners, land vehicle side door latches, rear compartment latches, hood latches, liftgate glass latches, liftgate latches, tailgate latches, endgate latches, hatchback latches, strikers to support vehicle doors, door modules, inside and outside door handle assemblies, release cables, door hinges, door trim, window seals, and window lift assemblies; radios and cluster assemblies, each sold as integral components of land vehicle cockpits and land vehicle dashboards; heating, ventilation, and air conditioning controls and assemblies sold as integral components of land vehicle cockpits and dashboards” in International Class 12.

 

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 and/or services 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). 

 

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 and/or services.  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.  In this case, the following factors are the most relevant:  similarity of the marks and similarity of the goods and services.

 

Similarity 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).

 

“LEAVE YOUR MARK” U.S. Registration No. 4710958, “LEAVE YOUR MARK” U.S. Registration No. 5874490, & “LEAVE YOUR MARK” U.S. Registration No. 5874490

 

In the present case, literal element of applicant’s mark is “LEAVE YOUR MARK” and registrants’ marks are “LEAVE YOUR MARK”.  The literal element of these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because the literal elements are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services.  Id.

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Further, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks are confusingly similar. 

 

“LIL’ TRAX LEAVE YOUR MARK” U.S. Registration No. 4381946 & “TRAX LEAVE YOUR MARK” U.S. Registration No. 5174365

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

In this case, the applied-for mark, “LEAVE YOUR MARK”, and the registered marks, “LIL’ TRAX LEAVE YOUR MARK” and “TRAX LEAVE YOUR MARK”, are similar in appearance and sound, as both marks contain the identical terms, “LEAVE YOUR MARK”, creating a similar overall commercial impression.

 

Therefore, the marks are confusingly similar.

 

Similarity of the Goods and Services

 

The goods and services 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).

 

The compared goods and services 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 and/or services] 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 and services 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)).  

 

“LIL’ TRAX LEAVE YOUR MARK” U.S. Registration No. 4381946 & “TRAX LEAVE YOUR MARK” U.S. Registration No. 5174365

 

In this case, the goods in the application and registrations are identical for “shirts, jackets, socks, underwear, sandals, slippers, hats, and caps.”  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s aforementioned goods are related.  

 

Further, decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

Neither the application nor the registrations contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

Additionally, the attached Internet evidence, consisting of the websites of J. Crew (www.jcrew.com), Kate Spade (www.katespade.com), and Wilson’s Leather (www.wilsonsleather.com), establishes that the same entity commonly manufactures both various types of bags and cases, various types of accessories such as wallets and umbrellas, and various types of clothing, footwear and headwear and also provides the services of bringing together, for the benefit of others, goods in the field of bags and clothing, enabling customers to conveniently view and purchase those goods and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services 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).

 

“LIL’ TRAX LEAVE YOUR MARK” U.S. Registration No. 4381946, “LEAVE YOUR MARK” U.S. Registration No. 4710958, “TRAX LEAVE YOUR MARK” U.S. Registration No. 5174365, “LEAVE YOUR MARK” U.S. Registration No. 5314926 & “LEAVE YOUR MARK” U.S. Registration No. 5874490

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

The attached Internet evidence, consisting of the websites of J. Crew (www.jcrew.com), Kate Spade (www.katespade.com), and Wilson’s Leather (www.wilsonsleather.com), Levante Brewing (www.levantebrewing.com), Rogue Ales & Spirits (www.rogue.com), The Bruery (www.thebruery.com), Simply Stamps (www.simplystamps.com), Stamp Maker (www.thestampmaker.com), Rubber Stamps (www.rubberstamps.net), Audi (www.audiusa.com), BMW (www.bmw.com), and Ford (www.ford.com), establishes that the same entity commonly manufactures clothing, bags, clothing accessories, stamps, beer, and car parts and also provides the services of bringing together, for the benefit of others, goods in the field of clothing, bags, alcoholic beverages, stationery, and land vehicles, enabling customers to conveniently view and purchase those goods and markets the goods and services under the same mark.  Thus, applicant’s and registrants’ goods and services 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).

 

Because applicant’s and registrants’ marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88188575 (LEAVE YOUR MARK) 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services identifies goods which are classified incorrectly.  Applicant must amend the application to classify the goods as per the guidelines below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). 

 

Further, the identification of goods and services contains indefinite and overly broad wording that must be clarified and properly classified. TMEP §1402.01. 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

Applicant must clarify the wording for several of the goods and services as to the nature or specific type of goods and services being provided as indicated further below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see below for further explanation and underlined, italicized, and bolded suggested amendments.

 

Further, the identification of goods and services contains parentheses.  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 services.

 

Applicant must properly classify the wording “chests and boxes of leather” because the goods are partially classified incorrectly.  While “boxes of leather” are properly classified in International Class 18, “chests of leather” are properly classified in International Class 20.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant must clarify the wording “canvas bags” and “trolleys” because it is indefinite and overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the type of canvas bags and trolleys being provided by the applicant.  Further, this wording could identify goods in more than one international class.  For example, “shopping trolleys” are properly classified in International Class 12, while “general purpose sport trolley bags” are properly classified in International Class 18.  Similarly, “canvas shopping bags” are properly classified in International Class 18, while “canvas bags for laundry” are properly classified in International Class 22.

 

Applicant must clarify the wording “covers for shoes” and “visors” because it is indefinite and overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the type of covers for shoes and visors being provided by the applicant.  Further, this wording could identify goods in more than one international class.  For example, “sun visors for automobiles” are properly classified in International Class 12, while “visors being headwear” are properly classified in International Class 25.  Similarly, “surgical shoe covers” are properly classified in International Class 10, while “covers for shoes being shoe covers for use when wearing shoes” are properly classified in International Class 25.

 

The wording “Mackintoshes” in the identification of goods is the plural 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. 4445661 (MACKINTOSH). 

 

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). 

 

Applicant may replace such wording with the following, if appropriate:  “raincoats.”

 

Applicant is advised to delete or modify the duplicate entries in the identification of goods in International Class 18 for “Handbags” and in International Class 25 for “Gowns” and “Robes.”  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, 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Suggested Amendments

 

Applicant may adopt the following suggested amendments, if accurate:

 

            Class 10:  Surgical shoe covers

 

            Class 12:  Shopping Trolleys; sun visors for automobiles

 

            Class 18:  Handbags; Travel baggage; Card wallets; Card cases of leather; Leather credit card holders; Wallets; File folders made of leather being briefcase-type leather business folders; Key cases made of leather; Suitcases; Make-up bags sold empty, not fitted; Gym bags; Evening bags and shoulder bags for women; Shopping bags made of skin; School book bags; Travel garment covers being garment bags for travel; Shoe carriers being shoe bags for travel; Beach bags; Nappy bags being diaper bags; Backpacks; Boston bags; Travelling cases being travel cases; Canvas shopping bags; Overnight bags; General purpose sport trolley bags; Satchels; Formal handbags; Vanity cases, not fitted; Leather; Boxes of leather; Briefcases; Straps made of leather; Umbrellas; Leather leashes; Saddlery

 

            Class 20:  Chests of leather

 

            Class 22:  Canvas bags for laundry

 

            Class 25:  Coats; Jackets; Trousers; Skirts; Tops as clothing; Raincoats; Topcoats; Waist belts; Suspenders; Gowns; Heavy jackets; Sweaters; Denim jeans; Cloaks; Parkas; Shirts; Undershirts; Cardigans; Underwear; Baby doll nighties; Robes; Swimwear; Negligees; Swimming costumes; Shawls; Foulards; Sashes for wear; Neckties; Neck ties as clothing; Sweat shirts; Maillots; Polo shirts; Leotards; Trousers shorts; Combinations; Wedding dresses; Stockings; Socks; Shoes; Slippers; Covers for shoes being shoe covers for use when wearing shoes; Galoshes; Clogs; Soles for footwear; Shoe uppers; Boots; Ski boots; Snow boots; Half-boots; Espadrilles; Sandals; Bath sandals; Gloves; Mittens; Headwear, namely, hats and caps; Visors being headwear

 

            Class 35:  The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in the field of cosmetics, perfumery, candles, hand-operated hand tools and implements, cutlery, forks and spoons, razors, manicure and pedicure tools, spectacles, optical goods and cases for optical goods, tablet computers, telephones, smartwatches and covers therefor, health monitoring sensors and apparatus for monitoring heart rate, lighting installations and lamps, and land vehicles; The bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods in the field of jewellery, horological articles, stationery, office stationery, bags, pocket wallets, saddlery, furniture, kitchen utensils, utensils for household purposes, services being dishes, bath linen, bed linen, table linen, clothing, footwear, headwear, belts, buttons, hinges, buckles, carpets, floor coverings, and wall hangings; The bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods in the field of games, toys, instruments, tools, devices and clothing designed for sports games, for sports and for physical education, bags and cases for sporting goods, fruits and vegetables, jellies, jams, compotes, honey, edible oils, pastries, confectionery, chocolate, coffee, tea, natural plants and flowers, non-alcoholic beverages, alcoholic beverages, and smokers' articles; Promotional services, namely, commercial presentation of goods for promotional purposes being promoting the goods of others in the field of gadgets; The bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods in the field of gadgets; All of the aforesaid services exclude the transport of said goods

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 and services that are classified in at least seven classes; however, applicant submitted a fee sufficient for only three classes.  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.

 

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.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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.

 

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.    

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 November 26, 2019 for

U.S. Trademark Application Serial No. 88585625

 

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. 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 November 26, 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.”