Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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

 

SUMMARY OF ISSUES:

·         Amended Identification of Goods Required

·         Multiple-Class Application Requirements

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Select entries from applicant’s identification of goods are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Select entries from applicant’s identification of goods are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Select entries from the identification of goods are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Further, this wording could identify goods in more than one international class.  This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class.

 

The identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

The word “headgear” in the identification of goods must be clarified because it is indefinite and too broad without further clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This word is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, this word could include “sports helmets” in International Class 9, “orthodontic headgear” in International Class 10, “headwear” in International Class 25, or “headwear for dolls” in International Class 28.

 

Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25).  Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”

 

This chart below identifies applicant’s indefinite and broad identification entries, the reasoning explaining why the entries are indefinite and/or broad, and suggested amended wording which applicant may adopt.  The chart also identifies applicant’s entries that contain parentheses and suggested wording which applicant may adopt.  Suggested changes are shown in bold.  Applicant may substitute the wording contained within the table for each indefinite and broad entry, if accurate.

 

Applicant’s Class & Identification of Goods	Reason for Amendment	Suggested Amendments (bold)
INTERNATIONAL CLASS 09
Scientific, nautical, photographic, cinematographic, optical, measuring, signalling, life-saving (rescue) and educational apparatus and instruments	Indefinite because the wording does not make clear the nature of the goods. Applicant must either specify the common commercial or generic name for the devices or clarify the nature of the goods. In addition, the wording is indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	Scientific, nautical, photographic, cinematographic, optical, measuring, signalling, life-saving, rescue (rescue) and educational apparatus and instruments, namely, {specifically list common commercial name of the apparatus and instruments, e.g., optical mirrors, sound recording apparatus and instruments, protective rescue apparatus, namely, fire-resistant protective carriers, etc.}
data processing equipment, computers	Indefinite because the nature of the goods is unclear.	data processing equipment for use with computers
neoprene suits, gloves and masks	Indefinite because the purpose of the goods must be further clarified.	neoprene suits, gloves and masks for diving
mouthguards	Indefinite and too broad because this wording does not make clear the purpose of the goods and could include goods in more than one international class. Applicant must either (1) specify the wording in Class 09, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	mouthguards for athletic use
glasses (optics)	Indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	eye glasses
safety belts	Indefinite and too broad because this wording does not make clear the purpose of the goods and could include goods in more than one international class. Applicant must either (1) specify the wording in Class 09, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	safety belts for vehicle seats in International Class 12
observation instruments	Indefinite because the nature of the goods is unclear.	observation instruments, namely, observation rockets
neoprene gloves	Indefinite because the purpose of the goods must be further clarified.	neoprene gloves for protection against accidents
masks	Indefinite and too broad because this wording does not make clear the purpose of the goods and could include goods in more than one international class. Applicant must either (1) specify the wording in Class 09, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	protection masks
nose clip	Indefinite and too broad because this wording does not make clear the purpose of the goods and could include goods in more than one international class. Applicant must either (1) specify the wording in Class 09, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	nose clips for divers and swimming
wearable activity sensors	Indefinite because the nature of the goods is unclear.	wearable activity sensors in the nature of wearable activity trackers
INTERNATIONAL CLASS 18
shoe bags	Indefinite and too broad because this wording does not make clear the purpose of the goods and could include goods in more than one international class. Applicant must either (1) specify the wording in Class 18, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	shoe bags for travel
INTERNATIONAL CLASS 24
Bath linen (except clothing)	Indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	bath linen, except clothing
INTERNATIONAL CLASS 25
Clothing	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.	Clothing, namely, {list specific items of clothing, e.g., underwear, swimsuits, bath robes, etc.}
footwear (except for orthopedic shoes)	Indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	footwear, except for orthopedic shoes
headgear	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.	headwear
gloves (clothing)	Indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	gloves
waterproof clothing	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.	waterproof clothing, namely, waterproof jackets and pants
sports clothes	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.	sports clothes, namely, {list items of sports clothing, e.g., sports jersey, sports bra, sports pants, sports vests, etc.}
caps	Indefinite because the nature of the goods is unclear.	caps as headwear
sports clothes (except for diving suits)	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  In addition, applicant must remove the parentheses and incorporate the information into the identification of goods.	sports clothes, except for diving suits, namely, {list items of sports clothing, e.g., sports jersey, sports bra, sports pants, sports vests, etc.}
INTERNATIONAL CLASS 28
Games	Indefinite because applicant must specifically list the games by the common commercial or generic name for the games.	Games, namely, {list type of games by common commercial name, e.g., card games, board games, horseshoe games, etc.}
toys	Indefinite because applicant must specifically list the toys by the common commercial or generic name for the toys.	toys, namely, {list type of toys by common commercial name, e.g., bath toys, pet toys, construction toys, musical toys, etc.}
gymnastics and sports articles	Indefinite because applicant must specifically list the goods by the common commercial or generic name for the articles.	gymnastics and sports articles, namely, {list items by common commercial or generic name, e.g. gymnastics rings, gymnastic uneven bars, etc.}
derived products for wakeboards	Indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  Applicant must either (1) specify the wording in Class 28, or (2) add the appropriate international class and comply with the multiple-class application requirements set forth in this Office action.	wakeboard binding lubricants in International Class 04
swimming kick boards (sports articles)	Indefinite due to use of parentheses.  Applicant must remove the parentheses and incorporate the information into the identification of goods.	sports articles, namely, swimming kick boards

 

Applicant may adopt the following wording, if accurate, with changes in bold and deletions in strikethrough:

 

International Class 04:         wakeboard binding lubricants

 

International Class 09:            Scientific, nautical, photographic, cinematographic, optical, measuring, signalling, life-saving and rescue (rescue) and educational apparatus and instruments, namely, {specifically list common commercial name of the apparatus and instruments, e.g., optical mirrors, sound recording apparatus and instruments, protective rescue apparatus, namely, fire-resistant protective carriers, etc.}; apparatus for recording, transmission, reproduction of sound or images; data processing equipment for use with computers; luminous beacons; barometers; marking and signalling buoys; protective helmets; life belts; neoprene suits, gloves and masks for diving; mouthguards for athletic use; eye glasses; spectacle cases; safety belts; observation instruments, namely, observation rockets; reflective life jackets; life jackets; life buoys; life-saving rafts; neoprene gloves for protection against accidents; protection masks; diving suits; nose clips for divers and swimming; batteries; wearable activity sensors in the nature of wearable activity trackers

 

International Class 10:         mouthguards for medical purposes; sanitary masks for medical purposes; therapeutic nose clips for the prevention of snoring; orthodontic headgear

 

International Class 12:         safety belts for vehicle seats

 

International Class 18:            Rucksacks; handbags; sports bags; bum bags; shoe bags for travel; purses; valises; parasols

 

International Class 22:         shoe bags for storage

 

International Class 24:            Bath linen, except clothing; towels

 

International Class 25:            Clothing, namely, {list specific items of clothing, e.g., underwear, swimsuits, bath robes, etc.}; footwear, except for orthopedic shoes; headwear; underwear; swimsuits; bath robes; bathing caps; bath sandals and slippers; tee-shirts; skirts; dresses; jackets; coats; shirts; shorts; ties; belts; gloves (clothing); waterproof clothing namely, waterproof jackets and pants; wet suits for water-skiing; sports clothes, namely, {list items of sports clothing, e.g., sports jersey, sports bra, sports pants, sports vests, etc.}; hats; caps as headwear; socks; slippers; sports shoes; beach shoes; sports clothes, except for diving suits, namely, {list items of sports clothing, e.g., sports jersey, sports bra, sports pants, sports vests, etc.}

 

International Class 28:            Games, namely, {list type of games by common commercial name, e.g., card games, board games, horseshoe games, etc.}; toys, namely, {list type of toys by common commercial name, e.g., bath toys, pet toys, construction toys, musical toys, etc.}; balls for games; gymnastics and sports articles, namely, {list items by common commercial or generic name, e.g. gymnastics rings, gymnastic uneven bars, etc.}; sailboards; non-motorized surfboards; boards used for water sports; water skis; ski edges; ski bindings; protective covers for surfboards; boards for bodyboarding; boards for bodysurfing; surfboards; paddleboards; straps for surfboards; leashes for surfboards; leashes for bodyboards; boards for kitesurfing; kites; flippers for swimming; flippers for bodyboarding; wakeboards; derived products for wakeboards; swimming jackets; sports articles, namely, swimming kick boards; harness for sailboards; swimming belts; catchers’ masks; umpires’ masks

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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 potentially identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the goods 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 potentially identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 5 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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).  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 using regular TEAS.

 

HOW TO RESPOND

 

Click to file a response to this nonfinal Office action  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

/Hannah Gilbert/

Hannah Gilbert

Trademark Examining Attorney

Law Office 121

(571) 272-5029

hannah.gilbert@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 15, 2019 for

U.S. Trademark Application Serial No. 88636636

 

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. 

 

 

/Hannah Gilbert/

Hannah Gilbert

Trademark Examining Attorney

Law Office 121

(571) 272-5029

hannah.gilbert@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 15, 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.”