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:  March 20, 2020

 

 

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 Results: No Conflicting Marks

 

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.

 

Summary of Issues:

 

• Requirement: Identification & Classification of Goods Clarification
• Advisory: Multiple-Class Application Requirements

 

Requirement: Identification & Classification of Goods Clarification

 

First, the wording “paint boxes” in the identification of goods is indefinite and must be clarified because the wording is too broad making the nature of the goods identified unclear.  On 01/01/2019, the wording “paint boxes” was deleted from the ID Manual because the entry was indefinite and no longer acceptable.  Applicant must clarify the identification by specifying the use or purpose of the goods as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Second, the wording “banners” in the identification of goods is indefinite and must be clarified because the wording is too broad making the nature of the goods identified unclear and could include goods in multiple international classes.  Banners are classified by type or material composition.  Applicant must specify the type of banners and classify the goods in the appropriate international class as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Third, the wording “cover-ups” in the identification of goods is indefinite and must be clarified because the wording is too broad making the nature of the goods identified unclear.  Applicant must clarify the identification by specifying the type of cover-ups as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Suggested Identification

 

Instructions and suggested changes are shown in bold text.  Applicant may adopt the following identification, if accurate: 

 

IC 16: Blank journals; Blank writing journals; Notebooks; Notepads; Note paper; Writing paper; Writing paper pads; Folders; Envelopes; Stationery; Stationery kits comprised of notebooks, writing instruments and stickers; Stickers; Decals; Wall decals; Wall stickers; Decals and stickers for use as home décor; Removable tattoo transfers; Temporary tattoo transfers; Art prints; Framed art prints; Lithographic prints; Photographic prints; Pictorial prints; Prints; Lithographs; Photographs; Posters; Calendars; Art paper; Arts and crafts paint kits; Painting palettes; Paint boxes for use in schools; Drawing boards; Artists' brushes; Paint brushes; Painters' brushes; Artists' pens; Pens; Pencils for painting and drawing; Crayons; Colored pencils; Pencils; Chalks; Ink stamps; Rubber stamps; Stamp inks; Stamp pads; Stencils; Stencil cases; Writing implements; Writing instruments; Erasers; Pouches for writing instruments; Pen and pencil cases; Pen and pencil boxes; Pen and pencil holders; Desktop organizers; Boxes of paper or cardboard; Stationery boxes; Coasters of paper or cardboard; Party ornaments of paper or cardboard; Gift bags; Gift-wrapping paper; Paper gift bag tags; Paper hang tags; Cardboard hang tags; Paper napkins; Disposable napkins; {Specify the type of banners, e.g., paper} banners; Paper party decorations; Paper tablecloths; Greeting cards; Holiday cards; Christmas cards; Invitation cards; Printed invitations; Paper gift cards; Non-magnetically encoded gift cards; Printed publications, namely, articles, books, booklets, book excerpts, brochures, guides, magazines and pamphlets in the fields of performing and visual arts; Printed publications, namely, event programs; Printed publications, namely, souvenir programs relating to musical and entertainment events; Printed publications, namely, articles, books, booklets, book excerpts, brochures, guides, magazines and pamphlets relating to a musical artist and an entertainer; Printed publications, namely, articles, books, booklets, book excerpts, brochures, guides, magazines and pamphlets, in the field of music; Printed publications, namely, articles, books, booklets, book excerpts, brochures, guides, magazines and pamphlets, in the field of entertainment; Printed music books; Music score books; Printed sheet music; Song books

 

IC 24: {Specify the type of banners, e.g., plastic, textile, vinyl} banners

 

IC 25: Tops as clothing; Tops for men and women, as clothing; Tops for children and adults, as clothing; Athletic tops for men and women, as clothing; Athletic tops for children and adults, as clothing; Tank tops; T-shirts; Shirts; Short-sleeve shirts; Long-sleeve shirts; Jerseys; Sweaters; Sweatshirts; Pullovers; Hooded pullovers; Bottoms as clothing; Bottoms for men and women, as clothing; Bottoms for children and adults, as clothing; Athletic bottoms for men and women, as clothing; Athletic bottoms for children and adults, as clothing; Pants; Jeans; Sweatpants; Shorts; Skirts; Dresses; Coats; Jackets; Ponchos; Vests; Loungewear; Lounge pants; Sleepwear; Pajamas; Bathrobes; Aprons; Swimwear; {Specify the type of cover-ups, e.g., beach} cover-ups; Belts; Gloves; Scarves; Shawls; Neckties; Bandanas; Hats; Caps with visors; Caps being headwear; Headwear; Headbands; Hosiery; Footwear; Shoes

 

IC 28: {Specify the type of banners, e.g., exercise and gymnastic} banners

 

Identification Advisories

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 16, 24, 25, and 28.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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: Multiple-Class Application Requirements

 

The application identifies goods that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application 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 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 that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

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

 

Office action questions. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

 

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 March 20, 2020 for

U.S. Trademark Application Serial No. 88732808

 

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. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

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 March 20, 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.”