To: | Women's Sports Foundation (tm@cpdb.com) |
Subject: | U.S. Trademark Application Serial No. 88608793 - WSF WOMEN'S SPORTS FOUNDATION - N/A |
Sent: | December 17, 2019 03:32:09 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88608793
Mark: WSF WOMEN'S SPORTS FOUNDATION
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Correspondence Address: ONE MONTGOMERY STREET, SUITE 3000
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Applicant: Women's Sports Foundation
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 17, 2019
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated December 17, 2019. The issues raised in the previous December 17, 2019Office action is/are as follow and is/are maintained: the requirement for a disclaimer and the requirement to amend the identification of goods and services.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous December 17, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
In this case, applicant must disclaim the wording “WOMEN'S SPORTS FOUNDATION” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Collins Dictionary, shows the term “WOMEN” is the plural of woman and means a female human being and “SPORTS” is defined as “games such as football and basketball and other competitive leisure activities which need physical effort and skill.” Thus the term “WOMEN’S SPORTS” describes a feature of applicant services, namely, educational services in the field of girls and women in sports.
Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
The attached evidence from Collins Dictionary, TGA Sports Foundation, Western Sports Foundation, Contact Sports Foundation, and Steel Sports Foundation shows the term FOUNDATION is commonly used in connection with similar goods to describe a business entity or organization established to maintain, assist, or finance institutions or projects related to sports. Thus, the wording merely describes applicant’s business structure. Therefore, the phrase “WOMEN'S SPORTS FOUNDATION” must be disclaimed because it describes applicant’s entity type and the subject matter of applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WOMEN'S SPORTS FOUNDATION” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
Applicant must clarify the wording “Providing educational material and services to persons interested in the development of girls and women in sports activities” and “curriculum, discussion guides, leadership development in the field of girls and women's sports” in the identification of services in International Class 41 because it is indefinite and too 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 what the services are. Further, this wording could identify goods and/or services in more than one international class. For example, “printed educational materials” and “printed discussion guides “are in International Class 16 and “leadership development training” and “educational services . . . and distribution of educational materials in connection therewith” are in International Class 41.
Applicant may substitute the following wording, if accurate:
International Class 16: Printed educational materials in the field of the development of girls and women in sports activities; Educational publications, namely, printed discussion guides in the field of the development of girls and women in sports activities
International Class 41: Educational services, namely, conducting {indicate specific modes of instruction, e.g., classes, seminars, conferences, workshops} in the field of the development of girls and women in sports activities and distribution of educational materials in connection therewith; Educational services, namely, developing curriculum for others in the field of the development of girls and women in sports activities; Leadership development training in the field of the development of girls and women in sports activities
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 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) 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.
AMENDMENT TO COLOR CLAIM AND DESCRIPTION OF MARK REQUIRED
To clarify whether color is claimed as a feature of the mark, applicant may satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit an amended description of the mark that omits any reference of color. See TMEP §§807.07(a)(ii), 808.02. The following is suggested, if accurate:
The mark consists of the letters “WSF” outlined in multiple thin lines and connected together stylistically which is to the left of the words “WOMEN'S SPORTS” and “FOUNDATION”. “FOUNDATION” is below the words “WOMEN'S SPORTS”.
(2) If color is a feature of the mark, applicant must submit a (a) list all the colors that are a feature of the mark, and (c) amend the description, if appropriate, to specify where all the colors appear in the literal and design elements of the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors black is claimed as a feature of the mark.”
Description: “The mark consists of the letters “WSF” outlined in multiple black lines and connected together stylistically which is to the left of the words “WOMEN'S SPORTS” and “FOUNDATION” all in black. “FOUNDATION” is below the words “WOMEN'S SPORTS.” The color white appears as background and is not part of the mark.
For more information about drawings and instructions on how to submit a new drawing and a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
TELEPHONE OR EMAIL RESPONSE SUGGESTED
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
/Kara E. Jackson/
Kara E. Jackson
Examining Attorney
Law Office 120
571-272-4358
Kara.Jackson@uspto.gov
RESPONSE GUIDANCE