To: | Footwear Industries Pty Ltd (drwtrademarks@wolfgreenfield.com) |
Subject: | U.S. Trademark Application Serial No. 88649525 - STEEL BLUE BLUE HEELER SQUARE TOE - F07722000600 |
Sent: | January 17, 2020 12:55:09 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88649525
Mark: STEEL BLUE BLUE HEELER SQUARE TOE
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Correspondence Address: WOLF, GREENFIELD & SACKS, P.C.
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Applicant: Footwear Industries Pty Ltd
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Reference/Docket No. F07722000600
Correspondence Email Address: |
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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: January 17, 2020
· Mark Not Entitled to Register – Prior–filed Application Pending
· Disclaimer Required
· Amended Identification of Goods Required
· Amended Mark Description and Color Claim Required
MARK NOT ENTITLED TO REGISTER – PRIOR-FILED APPLICATION PENDING
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “STEEL” and “SQUARE TOE SAFETY BOOT” 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. 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 wording “STEEL” and “SAFETY BOOT” appears in applicant’s identification of goods. In addition, the attached evidence from One Country, Keen, Western Boot Barn, Work Boots USA, and Tecovas establishes that this wording is commonly used in connection with similar goods to describe features and characteristics of the goods, namely, boots that have a square toe, include steel in its materials, and are worn for safety purposes. Thus, the wording merely describes features and characteristics of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “STEEL” and “SQUARE TOE SAFETY BOOT” 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.
Applicant should note the following additional requirement.
AMENDED IDENTIFICATION OF GOODS REQUIRED
The wording “protective footwear; safety footwear; safety boots; safety shoes” in the identification of goods in International Class 9 is indefinite and must be clarified because applicant must specify the purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Footwear is classified in International Class 9 only when it serves a specific safety or protective purpose, such as for the prevention of accident or injury or for industrial use.
In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The wording “industrial footwear, industrial boots, industrial shoes” in the identification of goods is indefinite and must be clarified because applicant must clarify the purpose of these goods as not for protective purposes for proper classification in International Class 25. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Footwear that is for protective purposes is classified in International Class 9.
Applicant may adopt the following wording, if accurate, with changes in bold:
International Class 9: protective industrial footwear; safety footwear for the prevention of accident or injury; safety boots for
the prevention of accident or injury; safety shoes for the prevention of accident or injury; footwear for protection against accidents, irradiation and fire,
namely, including boots and shoes for protection against accidents for use in industry; boots and
shoes for protection against accidents for use at work
International Class 25: footwear; boots, shoes, heavy duty footwear, non-protective industrial footwear, non-protective industrial boots, non-protective industrial shoes, work boots, work shoes, boots containing a reinforced toe cap, shoes containing a reinforced toe cap, steel-capped boots, steel-capped shoes, water-impervious footwear and hiking boots
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.
Applicant should note the following additional requirement.
AMENDED COLOR CLAIM AND MARK DESCRIPTION REQUIRED
The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark do not reference the color white. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether white is used as a color in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors white, blue, and red are claimed as a feature of the mark.”
Description: “The mark consists of a design of a dog’s head in blue and white to the left of the stylized wording “STEEL BLUE” with “STEEL” in white appearing inside a red rectangle above “BLUE” in blue, all appearing above the stylized wording “BLUE HEELER” with “BLUE” in blue and “HEELER” in red and the stylized wording “SQUARE TOE SAFETY BOOT” below appearing all in blue except the wording “SAFETY” appears in red.”
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and is not part of the mark. The following description is suggested, if accurate:
Color claim: “The colors white and red are claimed as a feature of the mark.”
Description: “The mark consists of a design of a dog’s head in blue to the left of the stylized wording “STEEL BLUE” with “STEEL” in stencil lettering appearing inside a red rectangle above “BLUE” in blue, all appearing above the stylized wording “BLUE HEELER” with “BLUE” in blue and “HEELER” in red and the stylized wording “SQUARE TOE SAFETY BOOT” below appearing all in blue except the wording “SAFETY” appears in red. The color white represents background, outlining, shading, and/or transparent areas and is not part of the mark.”
TMEP §807.07(d).
HOW TO RESPOND TO THIS OFFICE ACTION
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.
/Hannah Gilbert/
Hannah Gilbert
Trademark Examining Attorney
Law Office 121
(571) 272-5029
hannah.gilbert@uspto.gov
RESPONSE GUIDANCE