Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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:  December 09, 2019

 

Applicant must address issues shown below.  On December 9, 2019, the examining attorney and Puja Detjen discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

ADVISORY IDENTIFICATION OF GOODS

 

As discussed with the attorney of record, a minor typological error in the punctuation is resolved.

 

SUMMARY OF ISSUES:

 

• Identification and Classification of Goods
• Multiple-Class Application Requirements
• Advisory – Prior Filed Applications

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Specifically applicant must address issues with the following wording:

 

• The wording “mounts for attaching ancillary equipment in the form of sights to a firearm” identifies goods in class 13, not class 9.  Applicant must either amend the goods to seek registration in the appropriate class and pay the necessary fee or remove this wording.
• Applicant must clarify the nature of the “retail services”, e.g., “retail store services” and clarify the meaning of “connected with”.  Applicant may adopt “Retail store services in the field of optical lens sights for firearms, namely, optical red-dot sights, and firearm attachments, namely, mounts for attaching ancillary equipment in the form of sights to a firearm” in class 35, if accurate. 

 

Applicant may adopt the following identification, if accurate: 

 

Class 9: Optical lens sights for firearms, namely, optical red-dot sights

 

Class 13: Firearm attachments, namely, mounts for attaching ancillary equipment in the form of sights to a firearm

 

Class 35: Retail store services in the field of optical lens sights for firearms, namely, optical red-dot sights, and firearm attachments, namely, mounts for attaching ancillary equipment in the form of sights to a firearm

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

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/or services that are classified in at least three classes; however, applicant submitted a fee sufficient for only two classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Plus application is $225 per class.  See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a)(10); TMEP §§819.03, 819.04.  See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.

 

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); TMEP §820.03.  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 by regular TEAS.

 

In a multiple-class application based on use in commerce, a specimen is required for each class specified in the identification of goods and/or services.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b), 1403.01.  Therefore, if applicant amends the application to add international classes, applicant must submit a specimen showing use of the mark for each added class.  In addition, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).

 

If the additional specimen is identical to the specimen submitted with the application, and the application was properly verified, the verified statement is not necessary.  Further, if a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  TMEP §§904.01(b), 1403.01; see 37 C.F.R. §2.59(a).

 

ADVISORY - PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87863845 and 87334490 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this nonfinal Office action  

 

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.  

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 December 09, 2019 for

U.S. Trademark Application Serial No. 88593826

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 December 09, 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.”