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 20, 2019

 

Introduction

 

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 December 20, 2019, the examining attorney and Brad M. Behar, Esq. 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: Examiner’s Amendment Available

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

If sending an informal e-mail, please include the serial number and wording “EXAMINER’S AMENDMENT” in the subject field.  Upon emailing the examining attorney and authorizing the entry, no further response is necessary and an examiner’s amendment will issue promptly.  An examiner’s amendment will expedite processing of the application.

 

Advisory: Summary of Issues

 

1. Requirement: Identification of Goods and Services
2. Requirement: Explanation of the Mark’s Significance
3. Advisory: Claimed Registration Not Pertinent
4. Advisory: Response Guidelines

 

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

 

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 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least eleven (11) classes; however, applicant submitted fees sufficient for only seven (7) 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Requirement: Explanation of the Mark’s Significance

 

To permit proper examination of the application, applicant must explain whether the letters in the mark “AR” have any significance in the real estate, entertainment, health spa, golfing, clothing and leather goods and sports bags trade or industry or as applied to applicant’s goods and services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Advisory: Claimed Registration Not Pertinent

 

Applicant’s claim of ownership of U.S. Registration No. 4830168 will not be printed on any registration that may issue from this application because the marks are different.  Only prior registrations of the same or similar marks are considered related registrations for purposes of an ownership claim.  See 37 C.F.R. §2.36; TMEP §812.

 

Advisory: Response Guidelines

 

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

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.  

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 20, 2019 for

U.S. Trademark Application Serial No. 88622208

 

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. 

 

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 20, 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.”