United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/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:  November 08, 2019

 

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On November 6, 2019, the examining attorney and Bridget C. Sciamanna 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.

 

Summary of Issues:

• Classification and Identification of Goods

 

Classification and Identification of Goods

 

Applicant has classified “Synthetic textile fibers sold as an integral component of clothing, including but not limited to sportswear, active wear, athleisure wear, jeans, shirts, pants and hosiery” and “spandex fibers … sold as an integral component of clothing, including but not limited to sportswear, active wear, athleisure wear, jeans, shirts, pants and hosiery” in International Class 22; however, the proper classification is International Class 25, subject to clarification of applicant’s clothing items in Class 25 as indicated below.  Therefore, applicant may respond by (1) reclassifying these goods in the proper international class, or (2) deleting “Synthetic textile fibers sold as an integral component of clothing, including but not limited to sportswear, active wear, athleisure wear, jeans, shirts, pants and hosiery” and “spandex fibers … sold as an integral component of clothing, including but not limited to sportswear, active wear, athleisure wear, jeans, shirts, pants and hosiery” from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.

 

The wording “spandex fibers used in fabrics” [emphasis added] in the identification of goods for International Class 22 is indefinite and must be clarified because it is unclear what applicant means by “used as.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the wording “for use in the manufacture of,” if accurate.

 

The wording “including but not limited to” in the identification of goods for International Class 25 is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

The wording “sportswear, active wear, athleisure wear” in the identification of goods for International Class 25 is indefinite and must be clarified because the type(s) of sportswear, active wear and athleisure wear must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “spandex fibers used in fabrics sold as an integral component of…” in the identification of goods for International Class 25 is indefinite and must be clarified because it does not make clear what the goods are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The trademark examining attorney has suggested acceptable wording below.

 

Applicant may substitute the following wording, if accurate:

 

Class 022:  Spandex fibers for use in the manufacture of fabrics

 

Class 025:  Clothing, namely, sportswear in the nature of {specify type(s) of sportswear in class 25, e.g., t-shirts, sports pants, shorts, sports shoes}, active wear in the nature of {specify type(s) of active wear in class 25, e.g., track suits, track pants, pants, shorts, sports bras}, athleisure wear in the nature of {specify type(s) of athleisure wear in class 25, e.g., yoga pants, leggings, pants, shorts, hoodies}, swimwear, jeans, shirts, pants and hosiery; fabrics containing spandex fibers sold as an integral component of finished clothing items, namely, sportswear in the nature of {specify type(s) of sportswear in class 25, e.g., t-shirts, sports pants, shorts, sports shoes}, active wear in the nature of {specify type(s) of active wear in class 25, e.g., track suits, track pants, pants, shorts, sports bras}, athleisure wear in the nature of {specify type(s) of athleisure wear in class 25, e.g., yoga pants, leggings, pants, shorts, hoodies}, swimwear, jeans, shirts, pants and hosiery; synthetic textile fibers sold as an integral component of finished clothing items, namely, sportswear in the nature of {specify type(s) of sportswear in class 25, e.g., t-shirts, sports pants, shorts, sports shoes}, active wear in the nature of {specify type(s) of active wear in class 25, e.g., track suits, track pants, pants, shorts, sports bras}, athleisure wear in the nature of {specify type(s) of athleisure wear in class 25, e.g., yoga pants, leggings, pants, shorts, hoodies}, jeans, shirts, pants and hosiery; spandex fibers sold as an integral component of finished clothing items, namely, sportswear in the nature of {specify type(s) of sportswear in class 25, e.g., t-shirts, sports pants, shorts, sports shoes}, active wear in the nature of {specify type(s) of active wear in class 25, e.g., track suits, track pants, pants, shorts, sports bras}, athleisure wear in the nature of {specify type(s) of athleisure wear in class 25, e.g., yoga pants, leggings, pants, shorts, hoodies}, jeans, shirts, pants and hosiery

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

The attorney bar information has been provided. 37 C.F.R. §2.17(b)(3).

 

The attorney has agreed to the following statement: ‘The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.’ 37 C.F.R. §2.17(b)(3).

 

 

RESPONSE GUIDELINES FOR PRIORITY ACTION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

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.

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 November 08, 2019 for

U.S. Trademark Application Serial No. 88612968

 

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. 

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 08, 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.”