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:  May 12, 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 OF OFFICE RECORDS

 

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.

 

ENTITY TYPE REQUIREMENT

 

Applicant’s business name includes the foreign business designation “limited”; however, applicant set forth “corporation” as the legal entity in the application.  This business designation is generally considered the equivalent of a “limited company” or a “limited liability company.”  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).  Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i). 

 

Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENTS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

International Class 18

 

The wording “card holders; bags; cases” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. Applicant must amend the identification to specify the type.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

International Class 25

 

The wording “clothing” in the identification is indefinite and must be clarified because the types have not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “headgear” in the identification must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

International Class 35

 

The wording “retail services, wholesale services” in the identification of services is indefinite and must be clarified because it includes many different types of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “franchise services” in the identification must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The wording “and presentation of goods on communication media, for retail purposes” in the identification of services is indefinite and must be clarified because it does not appear to be services separate and distinct from the retail and whole store services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should delete this language from the identification.

 

Applicant may adopt all or part of the following identification, if accurate. The suggested amendments appear in bold:

 

International Class 8: shaving cases

 

International Class 9: headgear being protective helmets

 

International Class 16: desktop business card holders; gift bags

 

International Class 18: business card holders; weekend bags; handbags; shoulder bags; sports bags; backpacks; satchels; briefcases; luggage; travelling bags; overnight cases; suitcases; holdalls; wallets; credit card holders; purses; umbrellas; parasols; animal clothing

 

International Class 25: clothing, namely, shirts and pants; footwear; headgear, namely, hats and caps; belts; scarves; gloves

 

International Class 35: retail store services, wholesale store services, including those services offered via a general merchandising department store and clothing store, mail order catalogue, online, via television channel, via mobile phone and by direct marketing, all the aforementioned services connected with the sale of card holders, bags, handbags, shoulder bags, sports bags, backpacks, satchels, briefcases, cases, holdalls, wallets, credit card holders, purses, umbrellas, parasols, animal clothing, clothing, footwear, headgear, belts, scarves and gloves; franchise services, namely, offering business management assistance in the establishment and operation of retail stores featuring card holders, bags, handbags, shoulder bags, sports bags, backpacks, satchels, briefcases, cases, holdalls, wallets, credit card holders, purses, umbrellas, parasols, animal clothing, clothing, footwear, headgear, belts, scarves and gloves

 

International Class 36: franchising services, namely, providing financial advice regarding the establishment and operation of retail stores featuring card holders, bags, handbags, shoulder bags, sports bags, backpacks, satchels, briefcases, cases, holdalls, wallets, credit card holders, purses, umbrellas, parasols, animal clothing, clothing, footwear, headgear, belts, scarves and gloves

 

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.

 

The application identifies goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee sufficient for only three 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.

 

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.

 

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

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

 

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 May 12, 2020 for

U.S. Trademark Application Serial No. 88804885

 

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. 

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

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 May 12, 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.”