Notation to File

RE: Response Requested: Trademark Application Serial No. 88622208 - AR   I understand.  Paddleball is not PICKLEBALL.    The issue is scope.  For example, “providing tennis court facilities” is definite, but “court-type facilities for games with a net, paddles and balls” expands the scope of the ID by indicating that it is a “court-type”.  The wording, “games with a net, paddles and balls” could refer to paddleball; however, it could also refer to ping pong.  The wording, “in the nature of” often works to approximate the target good or service. Thus,   “providing court facilities for games with a net, paddles and balls in the nature of [paddleball, ping pong, badminton]; basketball court facilities”   Or shorter:   “providing court facilities for games in the nature of [paddleball, ping pong, badminton]; basketball court facilities”   Do either of these work?    From: Brad M. Behar <trademarks@beharlawfirm.com> Sent: Tuesday, January 28, 2020 1:11 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: ''Samantha Lyons' <slyons@beharlawfirm.com>; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Hi Examiner.  Paddleball and paddleball courts are different than Pickle-ball and the courts used to play pickle ball.  Is there any issue with the suggested:  "court-type facilities for games with a net, paddles and balls; basketball court facilities" ?   Best regards, Brad     Brad M. Behar BRAD M. BEHAR & ASSOCIATES, PLLC 94 Second Street Mineola, NY 11501 Tel: 516-741-6500 Fax: 516-741-6510       From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Tuesday, January 28, 2020 10:21 AM To: Brad M. Behar Cc: ''Samantha Lyons'; mkirby@beharlawfirm.com Subject: FW: Response Requested: Trademark Application Serial No. 88622208 - AR   Hello Brad: I just found the generic term for PICKLEBALL: “paddleball”.  Thus, a good ID would be “paddleball and basketball court facilities,” in Class 028.  Okay to change?  Thank you, Gilbert   Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028     From: Brad M. Behar <trademarks@beharlawfirm.com> Sent: Tuesday, January 28, 2020 3:28 AM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: 'Samantha Lyons' <slyons@beharlawfirm.com>; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Hi Examiner.  Thank you for the call yesterday.    If acceptable, please amend the ID by way of Examiner's Amendment to change "pickleball and basketball court facilities" to "court-type facilities for games with a net, paddles and balls; basketball court facilities". Thank you.   Best regards, Brad   Brad M. Behar BRAD M. BEHAR & ASSOCIATES, PLLC 94 Second Street Mineola, NY 11501 Tel: 516-741-6500 Fax: 516-741-6510     From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Tuesday, January 07, 2020 12:01 PM To: trademarks@beharlawfirm.com Cc: 'Samantha Lyons'; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Done. Thank you for the prompt response. Gilbert   From: Brad M. Behar <trademarks@beharlawfirm.com> Sent: Tuesday, January 7, 2020 10:21 AM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: 'Samantha Lyons' <slyons@beharlawfirm.com>; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Hi Examiner -   Thank you for the email.  The client accepts your proposed changes.  Please proceed with the Examiner's Amendment.    Best regards, Brad M. Behar     Brad M. Behar BRAD M. BEHAR & ASSOCIATES, PLLC 94 Second Street Mineola, NY 11501 Tel: 516-741-6500 Fax: 516-741-6510   From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Monday, January 06, 2020 9:14 PM To: trademarks@beharlawfirm.com Cc: 'Samantha Lyons'; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Hello Brad:   The ID you propose is next to perfect.  The only outstanding issue is the wording, “health spa services, namely, massages, facials, pedicures, manicures, waxing treatments, skin treatments” in Class 044.    In your email below, you proposed, “health spa services, namely, massages, facials, pedicures, manicures, cosmetic waxing treatments for hair removal, and skin treatments, namely, body wraps and microdermabrasion,” in Class 044.  This wording remains indefinite. Applicant may submit the following, if accurate:   Health spa services, namely, massages, facials, pedicures, manicures, cosmetic waxing treatments for hair removal, and cosmetic skin care treatments, namely, body wraps and microdermabrasion.    Thus, the identification of goods for International Class 044 would read as follows:   Class 044:            Health spa services, namely, massages, facials, pedicures, manicures, cosmetic waxing treatments for hair removal, and cosmetic skin care treatments, namely, body wraps and microdermabrasion; health care services, namely, physical therapy; personal fitness training services; health and nutrition consulting services   If you accept this change, I will issue the EA, and your client’s mark will proceed to publication.    Very best wishes for 2020-   Gilbert   Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028   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 an Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.   You may use your application serial number to view the current status and all of the documents in your Tradmark Application file using your serial number here:  http://tsdr.uspto.gov/   Please see the following U.S Trademark Office website for helpful information and instructional videos about basic Trademark Law, filing information, procecudues, timelines and fees:   http://www.uspto.gov/trademarks/basics/index.jsp#     From: Brad M. Behar <trademarks@beharlawfirm.com> Sent: Friday, January 3, 2020 10:31 AM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: 'Samantha Lyons' <slyons@beharlawfirm.com>; mkirby@beharlawfirm.com Subject: RE: Response Requested: Trademark Application Serial No. 88622208 - AR   Hi Examiner -   I discussed the objections to the identification with my client and have the following proposed ID for your consideration: Class 018: all-purpose carrying bags; all-purpose reusable carrying bags; all-purpose athletic bags; gym bags; sports bags; duffle bags; travelling bags; Class 025: sport shirts; sweaters; wind-resistant jackets; vests; hats; caps being headwear; visors being headwear; shirts; shorts; skirts; pants; jackets; vests; shoes; socks; gloves; bags; belts; head sweatbands; clothing accessories, namely scarves Class 028: golf bags; golf bags with or without wheels; golf tee bags; golf club bags; golf bag tags; golf bag covers; Class 036: real estate management services, namely, the operation of a gated community; real estate services, namely, real estate management, leasing, and brokerage of residential houses; promoting the sale of real estate of others through the distribution of printed and electronic materials; real estate sales management Class 041: arranging and conducting special events for social entertainment purposes; country club services; Entertainment in the nature of golf tournaments; golf courses; golf instruction; organizing, conducting and operating golf tournaments; rental of golf equipment; providing on-line publications in the nature of newsletters in the field of golf and country club services; tennis court facilities and tennis club services; tennis instruction; providing fitness and exercise facilities; swimming instruction; country club services featuring golf, tennis, racquet ball, weight training, aerobic exercises, health spas, and swimming pool services; residential community country club and golf course services; providing fitness classes; pickleball and basketball court facilities; personal fitness training services; Class 043: restaurant services; catering services; restaurant and bar services; rental of meeting rooms; Rental of banquet and social function facilities for special occasions, namely, weddings, birthday parties, and bar mitzvahs Class 044: health spa services, namely, massages, facials, pedicures, manicures, cosmetic waxing treatments for hair removal, and skin treatments, namely, body wraps and microdermabrasion; health care services, namely, physical therapy; personal fitness training services; health and nutrition consulting services If these amendments are acceptable, could you enter them by way of Examiner's Amendment and pass this along to publication?   Best regards, Brad     Brad M. Behar BRAD M. BEHAR & ASSOCIATES, PLLC 94 Second Street Mineola, NY 11501 Tel: 516-741-6500 Fax: 516-741-6510       From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV] Sent: Wednesday, December 18, 2019 4:33 PM To: trademarks@beharlawfirm.com; bbehar@beharlawfirm.com Subject: Response Requested: Trademark Application Serial No. 88622208 – AR   RE: Trademark Application Serial No. 88622208 – AR   Dear Brad M. Behar, Esq.:   I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email.    Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.   Requirement: Identification of Goods and Services THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN   The identification of goods and services for the items discussed below need clarification because they do not identify the goods and services with enough specificity and may identify goods and services in multiple International Classes.  See TMEP §§1402.01, 1402.03. Specifically:    Class 025   Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 025 for “vests.”  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).   The wording “caps” in the identification of goods for International Class 025 is indefinite, too broad and may include goods in other classes, e.g. “surgical caps” are in Class 010; “hub caps” are in Class 012; and “caps being headwear” are in Class 025.  TMEP §1402.01.   The wording “visors” in the identification of goods for International Class 025 is indefinite, too broad and may include goods in other classes, e.g. “visors for helmets” are in Class 009; “visors being headwear” are in Class 025.  TMEP §1402.01.   The wording “bags” in the identification of goods for International Class 025 is indefinite, too broad and may include goods in other classes, e.g. “computer bags” are in Class 009; “hunting boot bags” are in Class 025.  TMEP §1402.01.   Class 036   Applicant has classified “promoting the sale of real estate of others through the distribution of printed and electronic materials; real estate sales management” in International Class 036; however, the proper classification is International Class 035.  Therefore, applicant may respond by (1) adding International Class 035 to the application and reclassifying these services in the proper international class, (2) deleting “promoting the sale of real estate of others through the distribution of printed and electronic materials; real estate sales management” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.   Class 044   The wording “health spa services, namely, […] waxing treatments, skin treatments” in the identification of services for International Class 044 is indefinite and needs clarification to specify the type of waxing and skin treatment services in Class 044, e.g. “body waxing services”; “depilatory waxing”.  TMEP §1402.01.   Applicant has classified “personal fitness training services” in International Class 044; however, the proper classification is International Class 041.  Therefore, applicant may respond by (1) adding International Class 041 to the application and reclassifying these services in the proper international class, (2) deleting “personal fitness training services” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.   The application already identifies services in International Class 041, and this identification is acceptable as written.  Applicant may choose to delete, “personal fitness training services,” from Class 044 and merely add it to Class 041.    If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.   Class 009:            visors for helmets; computer bags   Class 010:            surgical caps   Class 012:            hub caps   Class 018:            [no changes]   Class 025:             sport shirts; sweaters; wind-resistant jackets; vests; hats; caps being headwear; visors being headwear; shirts; shorts; skirts; pants; jackets; shoes; socks; gloves; hunting boot bags; belts; head sweatbands; clothing accessories, namely, scarves   Class 028:             [no changes]   Class 035:            promoting the sale of real estate of others through the distribution of printed and electronic materials; real estate sales management   Class 036:             real estate management services, namely, the operation of a gated community; real estate services, namely, real estate management, leasing, and brokerage of residential houses   Class 041:             [no changes]; personal fitness training services   Class 043:             [no changes]   Class 044:             health spa services, namely, massages, facials, pedicures, manicures, body waxing treatments, skin treatments namely the injection of dermal fillers to reduce the appearance of facial fine lines; health care services, namely, physical therapy; health and nutrition consulting services   See TMEP §1402.01.   Advisories   Applicant’s goods and/or services 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.   Multiclass Advisories