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:  January 01, 2020

 

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).

 

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

 

Summary of the Issues

1.     Identification of the Goods;

2.     Advisory – Partial Abandonment.

 

 

Identification of the Goods

The applicant has applied for the mark WB for “Clothing for men, women and children, namely, shirts, polo shirts, t-shirts, tank tops, snap crotch shirts for infants and toddlers, sweatshirts, hoodies, jogging suits, trousers, pants, leggings, lounge pants, shorts, union suits, rainwear, skirts, blouses, dresses, sweaters, cardigans, pullovers, jackets, ponchos, coats, snow suits, sleepwear, pajamas, lingerie, underwear, boxer shorts, dressing gowns, robes, corsets being clothing, swimwear, socks, slipper socks; wearable blankets in the nature of blankets with sleeves; aprons; cloth baby bibs; ties as clothing, bow ties; hats, beanies, caps being headwear, sun visors, gloves, belts, suspenders, headbands, scarves; footwear for men, women and children, namely, boots, shoes, sneakers, sandals, booties, slippers and flip flops; and masquerade and Halloween costumes” in International Class 25.

 

The wording “sun visors” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, for the goods of sun visors to be properly classified in International Class 25 the applicant must indicate that the goods are headwear. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

 

Applicant may substitute the following wording, if accurate: 

 

 

“Clothing for men, women and children, namely, shirts, polo shirts, t-shirts, tank tops, snap crotch shirts for infants and toddlers, sweatshirts, hoodies, jogging suits, trousers, pants, leggings, lounge pants, shorts, union suits, rainwear, skirts, blouses, dresses, sweaters, cardigans, pullovers, jackets, ponchos, coats, snow suits, sleepwear, pajamas, lingerie, underwear, boxer shorts, dressing gowns, robes, corsets being clothing, swimwear, socks, slipper socks; wearable blankets in the nature of blankets with sleeves; aprons; cloth baby bibs; ties as clothing, bow ties; hats, beanies, caps being headwear, sun visors as headwear, gloves, belts, suspenders, headbands, scarves; footwear for men, women and children, namely, boots, shoes, sneakers, sandals, booties, slippers and flip flops; and masquerade and Halloween costumes” in International Class 25

 

The identification of goods or services should be clear, accurate and as concise as possible.  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules.  When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  However, it is the applicant's duty and prerogative to identify the goods and services.   TMEP Section 1402.01(d).

 

 

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.

 

 

Advisory – Partial Abandonment

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 25 will be deleted from the application:  Sun visors.  The application will then proceed with the following goods in International Class 25 only:  Clothing for men, women and children, namely, shirts, polo shirts, t-shirts, tank tops, snap crotch shirts for infants and toddlers, sweatshirts, hoodies, jogging suits, trousers, pants, leggings, lounge pants, shorts, union suits, rainwear, skirts, blouses, dresses, sweaters, cardigans, pullovers, jackets, ponchos, coats, snow suits, sleepwear, pajamas, lingerie, underwear, boxer shorts, dressing gowns, robes, corsets being clothing, swimwear, socks, slipper socks; wearable blankets in the nature of blankets with sleeves; aprons; cloth baby bibs; ties as clothing, bow ties; hats, beanies, caps being headwear, gloves, belts, suspenders, headbands, scarves; footwear for men, women and children, namely, boots, shoes, sneakers, sandals, booties, slippers and flip flops; and masquerade and Halloween costumes.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

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.    

 

 

If the applicant has any questions, please contact the undersigned.

 

 

/Ty Murray/

Ty Murray

Attorney Advisor

United States Patent and Trademark Office

Law Office 113

(571) 272-9438

ty.murray@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 January 01, 2020 for

U.S. Trademark Application Serial No. 88720065

 

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. 

 

 

/Ty Murray/

Ty Murray

Attorney Advisor

United States Patent and Trademark Office

Law Office 113

(571) 272-9438

ty.murray@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 January 01, 2020, 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.”